1300

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1300 Allowance and Issue

1301
Substantially Allowable Case, Special
1302
Final Review and Preparation for Issue

1302.01
General Review of Disclosure

1302.02
Requirement for a Rewritten Specification

1302.03
Status Letter of Allowability, POL-327

1302.04
Examiner's Amendments and Changes

1302.04 (a )
Title of Invention

1302.04 (b)
Cancelation of Non-Statutory Claim

1302.04 (c)
Cancellation of Claims to Non-Elected
Invention

1302.04 (d)
Cancellation of Claims Lost in Interfer-
ence

1302.04 (e)
Cancellation of Rejected Claims Follow-
ing Appeal

1302.04 (f)
Data of Copending Application Referred
to Should Be Brought up to Date

1302.04 (g)
Identification of Claims

1302.05
Correction of Drawing

1302.06
Prior Foreign Application

1302.07
Use of Retention Labels to Preserve Aban-
doned Companion Applications

1302.08
Interference Search

1302.09
Notations on File Wrapper

1302.10
Notations on Drawings and on Classification
(Issue) Slip

1302.11
Reference to Assignment Branch

1302.12
Listing of References

1302.13
Signing

1303
Notice of Allowance

1303.01
Amendment Received after Allowance

1303.02
Undelivered

1303.03
Not Withheld Due to Death of Inventor

1304
Withholding From Issue of "Secrecy Order"
Cases

1304.01
Amendments After D-10 Notice

1305
Jurisdiction

1306
Issue Fee

1307
Change in Classification of Cases Which are in
Issue

1308
Withdrawal From Issue

1308.01
Rejection After Allowance

1308.02
For Interference Purposes

1308.03
Quality Review Program for Examined
Patent Applications

C

1309
Issue of Patent

1309.01
"Printer Waiting" Cases

1309.02
Protest Against Issue

## 1301 Substantially Allowable Case, Special [R-30]

When an application is in condition for al-
lowance, except as to matters of form, the case
will be considered special and prompt action

taken to require correction of formal matters.
See § 710.02(b).

## 1302 Final Review and Preparation for Issue

## 1302.01 General Review of Disclosure [R-46]

When an application is apparently ready for
allowance, it should be reviewed by the ex-
aminer to make certain that the whole case
meets all formal requirements and particularly
that the brief summary of the invention and
the descriptive matter are confined to the in-
vention to which the allowed claims are di-
rected and that the language of the claims
finds clear support or antecedent basis in the
specification. Neglect to give due attention to
these matters may lead to confusion as to the
scope of the patent.

Frequently the invention as originally de-
scribed and claimed was of much greater scope
than that defined in the claims as allowed.
Some or much of the subject matter disclosed
may be entirely outside the bounds of the
claims accepted by the applicant. In such case
the examiner should require the applicant to
modify his brief summary of the invention
and restrict his descriptive matter so as to be
in harmony with the claims. However valu-
able for reference purposes the examiner may
consider the matter which is extraneous to the
claimed invention, patents should be confined
in their disclosures to the respective inventions
patented. (rule 71.) Of course enough back-
ground should be included to make the inven-
tion clearly understandable. See §§ 608.01 (d)
and 608.01 (e).

There should be clear support or antecedent
basis in the specification for the terminology
used in the claims. Usually the original claims
follow the nomenclature of the specification;
but sometimes in amending the claims or in
adding new claims, applicant employs terms
that do not appear in the specification. This
may result in uncertainty as to the interpreta-
tion to be given such terms. See § 601.01 (o).

Where a copending application is referred to
in the specification. the examiner should ascer-
tain whether it has matured into a patent or
become abandoned and that fact, or the patent
number added to the specification.

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The claims should be renumbered as required
by rule 126, and particular attention should be
given to claims dependent on previous claims
to see that the numbering is consistent. An ex-
aminer's amendment should be prepared if the
order of the claims is changed. See §§ 608.01 (j),
608.01 (n) and 1302.04(g).

The abstract should be checked for an ade-
quate and clear statement of the disclosure.
See § 608.01 (b).

The title should also be checked. It should
be as short and specific as possible. If a satis-
factory title is not supplied by the applicant.
the examiner may change the title on or after
allowance. See §§ 606 and 606.01.

All pencil notes made by the examiners must
be erased when the case is passed to issue.

The Mail Room receipt date of all amend-
ments should be reviewed to assure that they
were timely filed.

## 1302.02 Requirement for a Rewritten Specification [R-24]

Whenever interlineations or cancellations
have been made in the specification or amend-
ments which would lead to confusion and mis-
take. the examiner should require the entire
portion of specification affected to be rewritten
before passing the case to issue. See rule 125
in § 608.01 (q).

## 1302.03 Status Letter of Allowability, POL-327 [R-31]

Form POL-327 is used whenever an applica-
tion has been placed in condition for allowance
as a result of a communication from or an inter-
view with applicant except where an examiner's
amendment will be mailed promptly.

The date of the communication or interview
which resulted in the allowance and the name
of the person with whom the interview, if any,
was held should be included in the letter.

Immediately after determining that a POL
327 letter or examiner's amendment is neces-
sary. it should be prepared and mailed before
preparing the application for allowance. See
$ 714.13.

## 1302.04 Examiner's Amendments and Changes [R-46]

Except by formal amendment duly signed or
as hereinafter provided, no corrections, era-
sures, or interlineations may be made in the
body of written portions of the specification
or any other paper filed in the application for
patent. (See rule 121.)

Correction of the following obvious errors
and omissions only may be made with pen by
the examiner of the case who will then initial
the sheet margin and assume full responsibility
for the change. When correcting originally
filed papers, clean red ink must be used (not
blue or black ink) .

1\. Misspelled words.

2\. Disagreement of a noun with its verb.

3\. Inconsistent "case" of a pronoun.

4\. Disagreement between a reference charac-
ter as used in the description and on the draw-
ing. The character may be corrected in the
description but only when the examiner is
certain of the propriety of the change.

5\. Entry of "Patent No. ____ " to identify a-
patent which has been granted on a U.S. appli-
cation referred to by serial number in the
specification.

6\. Entry of ", abandoned", if a U.S. patent

47
application referred to by serial number in the
specification has become abandoned.

7\. Entry of ", now Defensive Publication No.
T
___ ," following the filing date if a patent
application referred to in the specification by
serial number has been published as a Defensive
Publication.

8\. Other obvious minor grammatical errors
\-
such as misplaced or omitted commas, improper
parentheses, quotation marks, etc.

9\. Obvious informalities in the application,
other than the ones noted above, or of purely
grammatical nature.

The fact that applicant is entitled under 35
U.S.C. 120 to an earlier U.S. effective filing
date is sometimes overlooked. To minimize
this possibility. the statement that, "This is a
division (continuation, continuation-in-part)
of Application Serial No. ____ , filed ________. "
should appear as the first sentence after the ab-
stract except in the case of design applications
where it should appear as set forth in § 1503.01.
Any such statements appearing elsewhere in the
specification should be relocated. The clerk in-
dicates the change for the printer in the appro-
priate margin when checking new applications
for matters of form.

Other obvious informalities in the applica-
tion may be corrected by the examiner, but
such corrections must be by a formal examiner's
amendment, signed by the primary examiner,
placed in the file, and a copy sent to the appli-
cant. The changes specified in the amendment
are entered by the clerk in the regular way.

The amendment or cancellation of claims by
formal examiner's amendment is permitted
when passing an application to issue where
these changes have been authorized by appli-
cant (or his attorney or agent ) in a telephone or

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personal interview. The examiner's amendment
should indicate that the changes were author-
ized, the date and type (personal or telephone)
of interview, and with whom it was held.

The examiner's amendment practice may be
used to make charges against deposit accounts

under special conditions. Such charges must
not exceed $50.00 for any one patent application.

An examiner's amendment can be used to
make a charge against a deposit account, pro-
vided prior approval is obtained from the
applicant, attorney or agent, in order to ex-

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## 1302.04 (f)

pedite the issuance of a patent on an applica-
tion otherwise ready for allowance. When such
an examiner's amendment is prepared the prior
approval is indicated by identification of the
name of the authorizing party, the date and
type (personal or telephone) of authorization,
the purpose for which the charge is made
(drawing correction, additional claims, etc.),
and the deposit account number. Further iden-
tifying data, if deemed necessary and requested
by the attorney, should also be included in the
examiner's amendment.

A change in the abstract may be made by
examiner's amendment.

Where a reference to the parent application
in an otherwise allowable rule 60 case has in-
advertently been omitted by the applicant, the
examiner should insert the required reference by
examiner's amendment (see § 201.11).

References cited as being of interest by ex-
aminers when passing an application to issue
will not be supplied to applicant. The refer-
ences will be cited as usual on form PO-892, a
copy of which will be attached to examiner's
amendment form POL-37.

Where an application is ready for issue ex-
cept for a slight defect in the drawing not
involving change in structure, the examiner
will note in pencil on the drawing the addition
or alteration to be made. He will also prepare
an examiner's amendment indicating the
changes made and send the drawing to the
Draftsman for the required correction.

See also § 608.02 (w).

No other changes may be made by any per-
-+ son in any record of the Patent and Trademark
Office without the written approval of the Com-
missioner of Patents and Trademarks.

In reviewing the application all errors
should be carefully noted. It is not necessary
that the language be the best; it is, however,
essential that it be clear in meaning, and free
from errors in syntax. Any necessary exam-
iner's amendment is usually made at the time
a case is being prepared for issue by the exam-
iner. However, the need for such may not be
noted until after the proof of the patent is read
and the case is sent up to the examiner with a
"printer waiting" slip (Form PO-97). A copy
of any formal examiner's amendment is sent to
applicant even if the application is already in
the printer's hands. See $ 1309.01.

Examiners will not cancel claims on the basis
of an amendment which argues for certain
claims and, alternatively, purports to authorize
their cancellation by the examiner if other
claims are allowed. In re Willingham, 127
USPQ 211, CCPA ( 1960).

In all instances, both before and after final

rejection, in which an application is placed in
condition for allowance as by an interview or
amendment, applicant should be notified
promptly of this fact by means of form letter
POL-327 or an examiner's amendment. [R-47]

### 1302.04(a) Title of Invention [R-24]

Where the title of the invention is not spe-
cific to the invention as claimed, see § 606.01.

### 1302.04(b) Cancellation of Non-Stat- utory Claim [R-17]

When a case is otherwise in condition for
allowance the examiner may cancel an obvi-
ously non-statutory claim such as one to "A
device substantially as shown and described."
Applicant should be notified of the cancella-
tion of the claim by an examiner's amendment.

1302.04(c)
Cancellation of Claims to
Non-Elected Invention
[R-24]

See §§ 821.01 and 821.02.

1302.04(d)
Cancellation of Claim
Lost in Interference
[R-24]

See § 1109.02.

1302.04(e)
Cancellation of Rejected
Claims Following Appeal
[R-24]

See §§ 1214.06, 1215.03, and 1215.04.

13.02.04(f)
Data of Copending Ap-
plication Referred to
Should Be Brought Up to
Date [R-47]

Where a patent application which is ready
for issue refers by serial number to a U.S.
application which has matured into a patent,
the examiner is authorized to enter the patent
number without a formal examiner's amend-
ment. This entry should be in the following
form: ", Patent No.
" Where a referred
to patent application has been published as a
Defensive Publication, the examiner should
enter ", now Defensive Publication No. T.
" following the filing date. They entry is
to be initialed and dated in the margin by the
examiner to fix responsibility for the same. The
entry and the initials should be in red ink.

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1302.04(g)

## MANUAL OF PATENT EXAMINING PROCEDURE

If the application referred to has become
abandoned, the entry, "abandoned" should be
made in red ink, and initialed and dated by the
examiner in the margin. A formal examiner's
amendment is not required.

### 1302.04(g) Identification of Claims [R-17]17

To identify a claim, a formal examiner's
amendment should refer to it by the original
number and, if renumbered in the allowed ap-
plication, also by the new number. 0.3081

1302.05 Correction
[R-24]

#### of Drawing

Where a case otherwise ready for issue re-
quires correction of the drawing, the exam-
iner, before sending the file to the Draftsman,
should attach thereto a slip indicating that the
case is ready for allowance. Slight defects
may be corrected on the examiner's initiative
as set forth in § 608.02(w) and a formal exam-
iner's amendment prepared.

Correction of some slight defects may
be obviated, see § 608.02-"Waiving of
Corrections"

#### 1302.06 Prior Foreign Application See §§ 201.14 (c) and 202.03.

1302.07 Use of Retention Labels To
Preserve Abandoned Com-
panion Applications [R-47]

Related applications referred to in patent
specifications are preserved from destruction
by a retention label (Form PO-150) which is
attached to the outside of the file wrapper. The
final review clerk of the group prepares such
a label for use as indicated below on each appli-
cation (which has not become a patent) which
is referred to in the specification or oath or
declaration of the application ready for allow-
ance (or in any Office letter therein ) .
If the case referred to is
Still pending :

Fill in and paste label on the face of the
pending file wrapper in the space provided.
Make no change in specification of the allow-
able application.

Abandoned for failure to pay issue fee:

If file has been forwarded to abandoned
files, fill in label and send it to Abandoned
Files Unit for attachment to the wrapper. If
not forwarded, treat the same as pending case.

Abandoned :

If file has been forwarded fill in label and
send it to Abandoned Files Unit for attach-
ment to the wrapper. If not forwarded treat
the same as pending case. Add ", now aban-
doned" by red ink and initialing to the allow-
able application.

Already patented :

No label is required. Insert patent num-
ber in specification if not already present.
Formal examiner's amendment not necessary
if this is only change.

In issue:

Fill in label. Make no change in the speci-
fication of the allowable application. Clip
the label to the serial register card of the
case in issue. If case in issue is abandoned or
is withdrawn from issue, it is returned to the
group, where the serial register card is pulled.
The label is attached at this time. If case in
issue is patented, the label is destroyed when
the card is pulled.

Examiners are reminded that only one re-
tention label is necessary. Thus, if a retention
label is already present, it is sufficient to merely
add "et al." to the serial number cited thereon.

### 1302.08 Interference Search [R-24]

Assuming that the case is found ready for
issue, the examiner makes an "interference
search" and notes the date and class and sub-
classes searched in the file wrapper. To do this,
he inspects all the pending prints and drawings
(or all the digests if the invention is not suscep-
tible of illustration) in the relevant subclasses
of the class in which the application is classified,
and all other pertinent classes, whether in his
group or elsewhere, in order to ascertain
whether any other applicant is claiming sub-
stantially the same subject matter as is being
allowed in the case in hand. When any of the
drawings or digests shows such a condition to be
likely, he examines the corresponding file.

If the search does not disclose any interfer-
ing application. the examiner should prepare
the case for issue.

### 1302.09 Notations on File Wrapper [R-4]]

The examiner preparing the application for
issue fills out. in black ink, the appropriate
spaces on the face of the file wrapper.

To aid the Patent Issue Division and the
printers, examiners should write the class and
subclass on the outside of the file wrapper as
carefully and legibly as possible. Each numeral

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should be distinct and any decimal point should
be shown clearly and in its proper position.

Spaces are provided on the file wrapper for
identifying data of a prior abandoned applica-
tion for which the instant application is a Sub-
stitute, and for the parent application (s) and
prior foreign application (s).

The class and subclass and the name of the
examiner which are written in pencil on the file
wrapper should correspond to the class and sub-
class in which the patent will issue and to the
name of the examiner preparing the applica-
tion for issue.

See § 202.02 for notation as to parent or prior
U.S. application to be placed on file wrapper.

See $ 202.03 for notation as to foreign patent
application to be placed on file wrapper.

See § 1302.13 for name of examiner.

From January 1, 1968 to September 24, 1974,
if an issuing application contained an abstract,
the abstract was published in the Official
Gazette instead of a claim. After October 1,
1974, claims appear in the Official Gazette.

Examiners, when preparing an application
for issue, are to record the number of the claim
selected for printing in the Official Gazette in
the box labeled "PRINT CLAIM (S) :" which
has been stamped on the inside left flap of the
file wrapper above the "Index of Claims".

The claim or claims should be selected in ac-
cordance with the following instructions :

1\. The broadest claim should be selected.

2\. Examiners should ordinarily designate but
one claim on each invention, although when a
plurality of inventions are claimed in an ap-
plication, additional claims up to a maximum of
five may be designated for publication.

3\. A dependent claim should not be selected
unless the independent claim on which it de-
pends is also printed.

4\. In reissue applications, the broadest claim
with changes or the broadest additional reissue
claim should be selected for printing.

When recording this information in the box
provided, the following items should be kept in
mind :

1\. Write the claim number clearly in black
ink.

2\. If multiple claims are selected, the claim
numbers should be separated by commas.

3\. The claim designated must be referred to by
using the renumbered patent claim number
rather than the original application claim
number.

### 1302.10 Notations on Drawings and on Classification (Issue) Slip [R-47]

On the margin of the first sheet of drawing,
the examiner indicates in black ink in the spaces

provided by the Draftsman's stamp the figure
which he selects for printing in the Official
Gazette and also the final official classification
of the case. Ordinarily a single figure is
selected for printing. This figure should be
consistent with the claim to be printed in the
Official Gazette. The numerals should fill as
much of the space provided as feasible.

If the selected figure is not on the first sheet,
the examiner should indicate it also on the
sheet where it does appear. If there is no
figure illustrative of or helpful in understand-
ing the claimed invention, no figure need be
selected. "None" may be written after "O.G.
Fig." If, through inadvertence, the stamped
legend for O.G. Fig. and class and subclass
appears within the margin of the drawing, the
examiner, should make the notations outside
of the margins.

The only date entered on the front of the
drawings is the date of mailing of the Notice
of Allowance, which is done by the Patent Issue
Division. Under current practice, the clerk of
the examining group does NOT enter any date
when the case is "sent to issue". See $$ 903.07,
903.07 (b) and 903.09 for notation to be applied
to the Issue Classification Slip (Form PO-270).

In all reissue applications, a horizontal line
should be drawn through the middle of the
"NAME" box. The applicant's name should be
placed in the upper portion of the box and the
number of the original patent which is being re-
issued should be placed in the lower portion of
the box.

To ensure that both copies of the slip do not
become separated from the file, examiners
should affix the entire unit set to the inside left
flap of the file wrapper by stapling it at the
upper right hand corner, using one staple only
in the space marked "cross references". It is
not necessary to remove the carbon paper.

The Allowed Files Unit of the Patent Issue
Division remove the original for use by Machine
Operations Branch and leave the carbon copy in
the file for use by the printer.

#### 1302.11 Reference to Assignment Division [R-41]

The practice of referring certain applications
to the Assignment Division when passing them
to issue is no longer followed. See § 303.

#### 1302.12 Listing of References [R- 4.7]

All references which have been cited by the
examiner during the prosecution. inchiding
those appearing in Board of Appeals decisions.
and those submitted by applicant if they con-

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form to the requirements set forth in §§ 707.05
(b) or 708.02, will be printed in the patent.

At time of allowance, the examiner may cite
pertinent art in an examiner's amendment.
Such pertinent art should be listed as usual on
form PO-892, a copy of which is attached to
the examiner's amendment form POL-37.
Such pertinent art is not sent to the applicant.
Such citation of art is important in the case of
continuing applications where significant prior
art is often of record in the parent case. In the
rare instance where no art is cited in a continua-
tion application, all the references cited during
the prosecution of the parent application will
be listed at allowance for printing in the patent.
See §§ 707.05 and 707.05 (a).

When preparing an application for allow-
ance, the "final review" clerk will verify that
there is at least one list of references (PO-892)
in the application. All lists of references are
maintained in the center section of the file wrap-
per.

In the first action after termination of an in-
terference, the examiner should make of record
in each application all references not already of
record which were pertinent to any motions to
dissolve and which were discussed in the deci-
sion on motion.

In any case, otherwise ready for issue, in
which the erroneous citation has not been for-
mally corrected in an official paper, the exam-
iner is directed to correct the citation by an
examiner's amendment. See § 707.05(g).

Any new reference cited when the case is in
issue, under the practice of § 1308.01, should be
added by way of a PO-892.

All copies of references placed in the file
wrapper during prosecution, should be retained
therein, when the allowed application is for-
warded to the Office of Quality Review.

### 1302.13 Signing [R-18]

The primary examiner and the assistant ex-
aminer involved in the allowance of an ap-
plication will print or stamp their names on
the file wrapper in place of their signatures.
Each examiner shall place his initials after his
printed or stamped name. A primary examiner
who prepares an application for issue him-
self prints or stamps his name and initials the
file wrapper only in the "Primary Examiner"
space. A line should be drawn through the
"Assistant Examiner" box to make it clear that
the absence of a name in the box was not an
oversight.

Only the names of the primary examiner and
the assistant examiner appearing on the face of
the application file wrapper will be listed in the
printed patent.

### 1303 Notice of Allowance [R-41]

Rule 311. Notice of allowance. If, on examination, it
shall appear that the applicant is entitled to a patent
under the law, a notice of allowance will be sent to
him, his attorney or his agent, calling for the payment
of a specified sum constituting the issue fee or a portion
thereof, which shall be paid within three months from
the date of the notice of allowance.

The appropriate form of notice of allowance
is prepared and mailed, and the mailing date
appearing thereon is stamped on the file
wrapper by the Patent Issue Division.

### 1303.01 Amendment Received After Allowance [R-47]

If the amendment is filed under rule 312,
see §§ 714.15 to 714.16(e). If the amendment
contains claims copied from a patent, see
§ 1101.02(g).

#### ISSUE BATCH NUMBER

All papers filed by applicant in the Office
after receiving the Notice of Allowance and be-
fore the time the Issue Fee Receipt is received
should include the Issue Batch Number. The
Issue Batch Number is printed on the Notice
of Allowance form in box 4 in the lower left
hand corner below the address. The Issue Batch
Number consists of a capital letter followed by
two digits, for example; "AO3", "D18", "F42".
"J79". Any lower case letters before the Issue
Batch Number should be ignored since they are
the typist's initials. Use of the Issue Batch Num-
bers is important since the allowed applications
are filed by these numbers.

Any paper filed after receiving the Issue Fee
Receipt should include the indicated patent
number rather than the Issue Batch Number.
At this time in the processing, the Issue Batch
Number is no longer useful since the application
has been removed from the batch at the time
the patent number was assigned.

#### 1303.02 Undelivered [R-24]

In case a notice of allowance is returned, and
a new notice is sent (see § 707.13), the date
of sending the notice must be changed in the file
to agree with the date of such remailing.

#### 1303.03 Not Withheld Due to Death of Inventor [R-24]

The notice of allowance will not be withheld
due to death of the inventor if the executor or
administrator has not intervened. See
§ 409.01 (f).

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# 1304 Withholding From Issue of "Se- crecy Order" Cases [R-24]

"Secrecy Order" cases are not sent to issue
even when all of the claims have been allowed.
Instead of mailing an ordinary notice of allow-
ance a D-10 Notice is sent. See § 107.02.

If the "Secrecy Order" in a case is with-
drawn after the D-10 notice is mailed, the case
should then be treated like an ordinary appli-
cation in condition for allowance.

# 1304.01 Amendments After D-10 No- tice [R-24]

For amendments received after D-10 Notice.
see § 107.02.

# 1305 Jurisdiction [R-47]

Jurisdiction of the application remains with
the primary examiner until the notice of allow-

ance is mailed by the Patent Issue Division.
However, the examiner may make examiner's
amendments correcting obvious errors, as,
when brought to the attention of the examiner
by the printer, and also may admit amend-
ments under rule 312 which are confined to
matters of form in specification or claims, or
to the cancellation of a claim or claims. The
examiner's action on other amendments under
rule 312 consists of a recommendation to the
Commissioner.

To regain jurisdiction over the case, the ex-
aminer must write a letter to the Commissioner
requesting it. See §§ 1112.04, 1308, and 1308.02.

Once the patent has been granted, the Patent
and Trademark Office can take no action con-
cerning it except as provided in 35 U.S.C. 135
and 35 U.S.C. 251 through 256. See chapter 1400.

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# 1306 Issue Fee [R-48]

35 U.S.C. 41 (a) 2. For issuing each original or re-
issue patent, except in design cases, $100; in addition,
$10 for each page (or portion thereof) of specification
as printed, and $2 for each sheet of drawing.

35 U.S.C. 151. If it appears that applicant is entitled
to a patent under the law, a written notice of allowance
of the application shall be given or mailed to the appli-
cant. The notice shall specify a sum, constituting the
issue fee or a portion thereof, which shall be paid with-
in three months thereafter.

Upon payment of this sum the patent shall issue, but
if payment is not timely made, the application shall be
regarded as abandoned.

Any remaining balance of the issue fee shall be paid
within three months from the sending of a notice there-
of, and, if not paid, the patent shall lapse at the ter-
mination of this three-month period. In calculating the
amount of a remaining balance, charges for a page or
less may be disregarded.

If any payment required by this section is not timely
made, but is submitted with the fee for delayed pay-
ment and the delay in payment is shown to have been
unavoidable, it may be accepted by the Commissioner as
though no abandonment or lapse had ever occurred.

37 CFR 1.314. Issuance of patent. If payment of the
issue fee or that portion thereof specified in the notice
of allowance is timely made, the patent will issue in
regular course.

The Office has discontinued the practice of es-
timating the number of printed pages of spe-
cification in advance of printing. Instead, a Base
Issue Fee is due three months from the date of
the Notice of Allowance. The amount of the
Base Issue Fee is shown on the Notice of Allow-
ance and consists of $100 plus $10 for the first
page of printed specification plus $2 for each
sheet of drawing.

The Office calculates the balance of issue fee
due, after payment of the Base Issue Fee speci-
fied by the Notice of Allowance, at the rate of
$10 a page, as provided in 35 IT.S.C. 41, for each
printed page of specification (including claims)
for which payment has not previously been re-
ceived. As the Base Issue Fee includes a $10
charge for one printed page of specification. a
Balance of Issue Fee is due for each patent
which consists of more than one printed page.
A "page" consists of one side of a printed sheet
containing any amount of specification (includ-
ing claims). A notification of the Balance of Is-
sne Fee Due is mailed in each such case along
with the original patent grant.

Applicants and their attorneys or agents are
urged to use the special fee transmittal forms
provided with the Notice of Allowance and the

Notice of Balance of Issue Fee Due when sub-
mitting their payments.

The payment of the balance of issue fee due
may be simplified by using a Patent and Trade-
mark Office Deposit Account for such a fee. A
statement, in duplicate, at the time of payment
of the minimum issue fee, indicating that ap-
plicant's or attorney's Deposit Account may be
billed for the balance of the issue fee will be
considered as sufficient authorization to make
such a payment.

The above mentioned fees will not be accepted
from anyone other than the applicant, attorney,
agent or a party in interest as shown by the rec-
ords of the Office.

# 1307 Change in Classification of Cases Which Are in Issue [R-24]

See § 903.07

## 1308 Withdrawal From Issue [R-48]

37 CFR 1.313. Withdrawal from issue. (a) After the
notice of allowance of an application is sent, the case
will not be withdrawn from issue except by approval
of the Commissioner, and if withdrawn for further
action on the part of the Office, a new notice of allow-
ance will be sent if the application is again allowed.

(b) When the issue fee or that portion thereof
specified in the notice of allowance has been paid, and
the patent to be issued has received its date and num-
ber, the application will not be withdrawn from issue
on account of any mistake or change of purpose of the
applicant, his attorney or his agent, nor for the purpose
of enabling the inventor to procure a foreign patent,
nor for any other reasons except mistake on the part
of the Office, or because of fraud or illegality in the
application, or for interference.

If the applicant wishes to have the case
withdrawn from issue, he must petition the
Commissioner. Withdrawal is permitted only
for the reasons stated in the rule. For with-
drawal procedure by examiner see § 1308.02.

## 1308.01 Rejection After Allowance [R-36]

A claim noted as allowable shall thereafter
be rejected only with the approval of the pri-
mary examiner. Great care should be exercised
in authorizing such rejection. See § 706.04.

When a new reference is discovered, which
obviously is applicable to one or more of the
allowed claims in an application in issue, and
where a sufficient portion of the statutory pe-
riod for payment of the issue fee remains. the
examiner is authorized to enter a letter inform-

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ing applicant of the proposal of requesting
withdrawal from issue for the purpose of re-
jecting the claim or claims as fully met by, or
obviously unpatentable over the new reference.
The letter should apply the reference in detail
and should also set a time limit (within such
statutory period), within which applicant may
respond by way of argument or amendment
under rule 312 to overcome the reference and
avoid the necessity for withdrawal from issue.
Such a letter, with the reference and file, should
be submitted to the group director before
mailing. After the letter is mailed, the file
wrapper should be retained by the examiner to
prevent inadvertent issuance of the patent.

If insufficient time remains to carry out the
above, or if no response is received, or if, a
response is filed and it fails to overcome the
reference, or if the above appears fruitless, a
letter is addressed to the group director, re-
questing that the application be withdrawn
from issue for the purpose of applying the new
reference. This letter should cite the refer-
ence, and, if need be, briefly state its applica-
tion. The letter should be submitted with the
reference and the file wrapper. Upon ap-
proval of this request, the letter is taken to the
Patent Issue Division and the application
is stamped "Withdrawn" over the name stamp
and initials of the primary examiner. It is then
returned to the group from which it came;
the withdrawal from the issue is entered on the
register, and the application is thus restored to
its former status as a pending application
awaiting action by the examiner. The exam-
iner at once writes a letter in the case stating
that the application has been withdrawn from
issue, citing the new reference, and rejecting the
claims met thereby.

The letter is given a paper number and
placed in the file.

If the examiner's proposed action is not ap-
proved, the letter requesting withdrawal from
issue should not be placed in the file.

## 1308.02 For Interference Purposes [R-22]

It may be necessary to withdraw a case from
issue for reasons connected with an interfer-
ence. For the procedure to be followed see
§§ 1101.01 (o) and 1112.04.

## 1308.03 Quality Review Program for Examined Patent Applica- tions [R-48]

The Quality Review Program which was in-
stituted in the Office on April 1. 1974 is now a

permanent part of the patent examining op-
eration.

The purpose of the program is to evaluate
and continuously monitor the quality of the
product of the patent examining process and
to assist in determining where substantive and
procedural adjustments in the patent examina-
tion process are appropriate.

The program involves randomly selecting a
sample of allowed applications from each of the
Art Units in the Patent Examining Corps be-
fore the applications are forwarded to the
Patent Issue Division for mailing of the "Notice
of Allowance." The quality review is conducted
by Patentability Review Examiners and is con-
cerned with three major aspects of the patent
examining process, namely :

(1) patentability of the allowed claims in
view of the prior art of record or other
reasons determined by the Review Ex-
aminers;

(2) compliance with current examining
practices and procedures; and

(3) correctness of the field of search and
the classification of each application.

The Quality Review Program also provides for
the re-search of some of the allowed applica-
tions in the sample.

If, during the quality review process, it is
determined that one or more claims of a re-
viewed application are clearly unpatentable, the
prosecution of the application will be reopened.
Only those applications wherein the prosecution
has been reopened will reflect in the record that
a quality review has taken place.

When prosecution is reopened as a result of
the patentability aspect of the quality review, a
copy of the Patentability Review form, "Quali-
ity Review-Part II," should be included with
the Office action. The Office action itself should
be consistant with, and include the substance of.
the proposed rejection (s) set forth in the Pat-
entability Review form.

In any application where prosecution is re-
opened as a result of the patentabiilty aspect of
the quality review the Office action should con-
tain an opening paragraph such as :

"Pursuant to a Quality Review of this ap-
plication, prosecution is reopened on claims
which are considered unpatent-
able for the reasons indicated below:"

When the Office action ineludes a rejection of
claims in addition to the claims in the Patent-
ability Review form, the action should contain
not only the above quoted paragraph. but also
a second paragraph such as :

"In addition, on further consideration of
the claims in this application. prosecution is
also reopened on claims
which

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are considered unpatentable for the reasons
set forth below :"

## 1309 Issue of Patent [R-48]

The files of allowed cases (not patented files)
are kept in the Patent Issue Division, arranged
in the batch number order. When the Issue fee
is paid within the time allowed by law, the file
is given a patent number and date, after which
it is sent for printing of the specification. A
bond paper copy of the drawing and specifica-
tion is ribboned and sealed in the Patent Issue
Division and finally signed.

See § 1303.01 for explanation of "Issue Batch
Number.".

# PATENT PRINTING PRIORITY

The applications placed in the weekly for-
mulation of an issue set aside for printing will
be selected according to the following priorities :

1\. Allowed cases which were made special
by the Commissioner (including those
under the Special Examining Procedure).

2\. Allowed cases that have a U.S. effective
filing date more than five years old.

3\. Allowed reissue applications.

4\. Allowed applications having an effective
filing date earlier than that required for
declaring an interference with a copending
application claiming the same subject
matter.

5\. Allowed application of a party involved
in a terminated interference.

6\. Allowed applications in which the appli-
cant has filed a request in the nature of a
petition setting forth his reasons for ad-
vancing the printing date.

7\. Allowed applications ready for printing
and not covered by any of the six preced-
ing categories. The selection of cases in
the involved category will be by chrono-
logical sequence based on the date the issue
fee was paid.

To ensure that any application falling
within the scope of the categories outlined
above and identified by numbers 1 to 5 receives
special treatment the examiners should staple
on the file wrapper a tag entitled "Special in
Patent Issue Division." The special tag. PTO-
1101, may be obtained from the group clerk.
The examiner shall print directly on the tag the
recitation "In Patent Issue Division" and the
appropriate printing category outlined above.
The application is then forwarded to Patent
Issue Division.

The personnel in Patent Issue Division will
then set the tagged cases aside and make a nota-
tion on all copies of the Notice of Allowance to

be mailed that further processing of this ap-
plication will be "special."

In cases falling in category No. 6, the request
must be filed after the Notice of Allowance has
been received and no later than the date the
issue fee is paid. The request must be directed
to the Head of the Patent Issue Division.

35 U.S.C. 2. Seal. The Patent and Trademark Office
shall have a seal with which letters patent, certificates
of trademark registrations, and papers issued from the
Office shall be authenticated.

35 U.S.C. 153. How issued. Patents shall be issued
in the name of the United States of America, under the
seal of the Patent and Trademark Office, and shall be
signed by the Commissioner or have his signature
placed thereon and attested by an officer of the Patent
and Trademark Office designated by the Commissioner,
and shall be recorded in the Patent and Trademark
Office.

35 U.S.C. 154. Contents and term of patent. Every
patent shall contain a short title of the invention and
a grant to the patentee, his heirs or assigns, for the
term of seventeen years, subject to the payment of
issue fees as provided for in this title, of the right to
exclude others from making, using, or selling the in-
vention throughout the United States, referring to the
specification for the particulars thereof. A copy of the
specification and drawings shall be annexed to the
patent and be a part thereof.

PRINTING PRACTITIONERS' NAMES ON PATENTS

The Office has adopted the following proce-
dure for printing a firm name, the names of up
to three registered patent practitioners, or no
practitioner's name on the patent.

The Notice of Allowance form, PTOL-85,
has been redesigned in part to provide a space
on PTOL-85b, the Base Issue Fee Transmittal
form, for the person submitting the base issue
fee to indicate, for printing, the names of up to
three registered patent attorneys and agents or,
alternatively, the name of a single firm which
has as a member at least one registered patent
attorney or agent. If the person submitting the
base issue fee desires that no practitioner's name
be printed on the patent, the space provided on
the revised Base Issue Fee Transmittal form
should be left blank. If no name is given, no
name will be printed.

This procedure is intended to solve various
problems encountered since the practice of rec-
ognizing firms was discontinued. While some
slight additional effort on the part of the attor-
ney or agent is thus involved if he desires to
have a printed entry on the patent. the follow-
ing advantages are provided by the new proce-
dure: (1) it permits printing firm names on
patents even though firms are no longer regis-

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tered with or recognized by the Office in new
applications; (2) it allows the names of those
individuals who actually performed the work
of preparing and prosecuting the application to
appear on the printed patent ; and (3) it grants
an attorney or agent the option of not having
his name appear on the printed patent.

## ASSIGNMENT PRINTED ON PATENT

The Issue Fee Transmittal Form portion
(PTOL-85b) of the Notice of Allowance as re-
vised in December 1969 and May 1973, provides
a space (item 2) for assignment data which
should be completed in order to comply with
rule 334 (37 CFR 1.334). Unless an assignee's
name and address are identified in item 2 of the
Issue Fee Transmittal Form PTOL-85b. the
patent will issue to the applicant. Assignment
data printed on the patent will be based solely
on the information so supplied.

A request for correction of error arising from
incomplete or erroneous information furnished
in item 2 of PTOL-85b will not be granted as a
matter of course and will be subject to adher-
ence to all the requirements of rule 323 (37
CFR 1.323).

## ASSIGNEE NAMES

Only the first appearing name of an as-
signee will be printed on the patent where
multiple names for the same party are identified
on the Base Issue Fee Transmittal form,
PTOL-85b. Such multiple names may occur
when both a legal name and an "also known as"
or "doing business as" name is also included.
This printing practice will not, however. affect
the practice of recording assignments with the
Office in the Assignment Division. The assignee
entry on form PTOL-85b should still be com-
pleted to indicate the assignment data as re-
corded in the Office. For example. the assign-
ment filed in the Office and therefore the
PTOL-85b assignee entry might read "Smith
Company doing business as (d.b.a.) Jones Com-
pany." The assignee entry on the printed patent
will read "Smith Company."

Various officials including the head of the
Patent Issue Division have been designated as
attesting officer to attest to the name of the Com-
missioner. The assistant head of the Patent
Issue Division acts as attesting officer in the
absence or unavailability of the head of the
Division.

# 1309.01 "Printer Waiting" Cases [R-48]

When the printer finds an apparent error in
an application. the file is returned to the

Office with an attached "Printer Waiting" slip
noting the supposed error.

The Patent Issue Division forwards such
"printer waiting" applications to the Office
of Quality Review (OQR) at periodic in-
tervals throughout each working day. The
applications are recorded in OQR for control
purposes and then hand carried by a messenger
from OQR with a control list to the group di-
rector's secretary. The secretary acts as a con-
trol center in each examining group and for-
wards the applications to the examiner by the
appropriate route. The application should be
taken up and acted on immediately and re-
turned to the group director's secretary within
24 hours (excluding weekends and holidays).
Either necessary corrective action should be
taken or an indication should be made that the
application is considered to be correct as it
stands.

If the examiner concurs in the criticisms,
the errors should, if possible, be corrected in
clean red ink and initialed or be corrected by
examiners' amendment. See § 1302.04.

If the required correction cannot be cured
by examiner's amendment, the application may
have to be withdrawn from issue. This may
sometimes be avoided if the attorney or his rep-
resentative is telephoned immediately, and the
error is corrected by amendment under 37 CFR
1.312.

The applications are picked up from the sec-
retary's office by the messenger from OQR and
returned to OQR for processing and then re-
turned to the Patent Issue Division for for-
warding to the printer. THESE APPLICA-
TIONS SHOULD NOT BE MAILED TO
THE PATENT ISSUE DIVISION OR TO
THE OQR.

# 1309.02 Protest Against Issue [R- 48]

37 CFR 1.291. Protests to the grant of a patent. The
patent statutes do not provide for opposition to the
grant of a patent on the part of the public. Protests
to the grant of a patent are ordinarily merely ac-
knowledged, and filed after being referred to the ex-
aminer having charge of the subject matter involved
for his information.

A party properly obtaining a knowledge of
an application pending in the Office may file a
protest against the issue of a patent upon it and
may therein call attention to any facts within
his knowledge which, in his opinion, would
make the grant of a patent improper. He does
not, however, thereby obtain the right to argue
the question before the tribunals of the Office.
The question of patentability has been uni-

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1309.02

formly looked upon as ex parte in character. It
is a question between the applicant and the
Office on behalf of the public, and no one mem-
ber of the public can be recognized as having
such an interest in the grant of a patent as to
entitle him to contest the matter any further
than to call attention to matters which he con-
siders bars. The Office will consider facts called
to its attention, but will not give the protestant

a hearing as a matter of right. Carey v. The New
Home Sewing Machine Co., 1901 C.D. 165; 97
O.G. 1171.

When a protest is filed against the issuance
of a patent it should be directed to the group
director who will refer it to the examiner. After
consideration by the examiner, the examiner's
decision on the protest is reported to the group
director.

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