(a) Applications may be withdrawn from issue for further action at the initiative of the Office or upon petition by the applicant. To request that the Office withdraw an application from issue, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why withdrawal of the application from issue is necessary. A petition under this section is not required if a request for continued examination under § 1.114 is filed prior to payment of the issue fee. If the Office withdraws the application from issue, the Office will issue a new notice of allowance if the Office again allows the application.
(b) Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except:
(1) A mistake on the part of the Office;
(2) A violation of § 1.56 or illegality in the application;
(3) Unpatentability of one or more claims; or
(4) For an interference or derivation proceeding.
(c) Once the issue fee has been paid, the application will not be withdrawn from issue upon petition by the applicant for any reason except:
(1) Unpatentability of one of more claims, which petition must be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable;
(2) Consideration of a request for continued examination in compliance with § 1.114; or
(3) Express abandonment of the application. Such express abandonment may be in favor of a continuing application.
(d) A petition under this section will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate officials before the date of issue. Withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of application information.
[65 FR 14873, Mar. 20, 2000, as amended at 65 FR 50105, Aug. 16, 2000; 77 FR 46626, Aug. 6, 2012]
Notes of Decisions
Novartis Ag v. Focarino, 740 F.3d 593 (Fed. Cir. 2014).
“application to examination”); 37 C.F.R. § 1.313 (a) (applicant may request resumption of examination).”
Pfizer Inc. v. Teva Pharm. USA, Inc., 803 F. Supp. 2d 409 (E.D. Va. 2011).
“Instead, an applicant may only disclose information, if such reference demonstrates the “unpatentability of one or more claims,” 37 C.F.R. § 1.313 , or as part of a request for continued examination.”
Abraxis Bioscience, LLC v. Kappos, 10 F. Supp. 3d 53 (D.D.C. 2014).
· cites it 3× “Similarly, USPTO regulation 37 C.F.R. § 1.313 , titled “Withdrawal from issue,” contemplates circumstances when an application may be withdrawn from issue even after issuance of a notice of allowance or issue fee payment.”
In Re Yamazaki, 702 F.3d 1327 (Fed. Cir. 2012).
· cites it 2× “Yamazaki submitted a declaration with the Reissue Application that identified the following as errors allegedly correctable by reissue: 1 The error of the applicants in failing to ensure proper disposition of the Petition to Withdraw during prosecution of the [Original…”
Harley v. Lehman, 981 F. Supp. 9 (D.D.C. 1997).
· cites it 4× “” 37 C.F.R. § 1.313 (b)(3) (1992). By letter dated January 8, 1993, the Commissioner rejected plaintiffs patent claims.”
Exelixis, Inc. v. Kappos, 906 F. Supp. 2d 474 (E.D. Va. 2012).
“37 C.F.R. § 1.313 . B. Patent Term Adjustments Subsection 154(b) of Title 35 governs the determination and measurement of PTA.”
In Re Gabapentin Pat. Litig., 648 F. Supp. 2d 641 (D.N.J. 2009).
“” See 37 C.F.R. § 1.313 . 23 Warner-Lambert’s proffered reason was the need to disclose the '326 Patent to the examiner.”
Blacklight Power, Inc. v. Dickinson, 109 F. Supp. 2d 44 (D.D.C. 2000).
· cites it 17× “is being withdrawn from issue pursuant to 37 C.F.R. § 1.313 ... to permit reopening of prosecution.”
Exelixis, Inc. v. Kappos, 919 F. Supp. 2d 689 (E.D. Va. 2013).
“, 37 C.F.R. §§ 1.313 , 1.56(a). Exelixis asserts that those duties do not rise to the level of “continued examination” within the meaning of the statute, and frames the work done after a notice of allowance as purely ministerial tasks precedent to patent issuance that are not…”
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