Occasionally, a patent practitioner will become aware of a prior art reference after the issue fee has been paid, and the question becomes—will the examiner consider the reference at this late stage?

The short answer is “yes”.  But as you probably guessed, it requires a little more than a simple phone call to the examiner.  Instead, the applicant will need to file a petition under 37 CFR 1.313(c) to have the patent application withdrawn from issue.  This includes payment of the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why the withdrawal is necessary.

While there are three distinct ways to accomplish a withdrawal under 37 CFR 1.313(c), in our experience, it is usually preferable to proceed under section (2) which involves filing a Request for Continued Examination (RCE) under § 1.114 (including payment of the separate RCE fee set forth in 37 CFR 1.17(e)).

In brief, when proceeding under 1.313(c)(2), the newly-discovered reference will be included in an Information Disclosure Statement (IDS) which will qualify as the RCE submission.  Once the RCE and petition are filed (preferably electronically), it is advisable to call the Office of Petitions to notify them of the filing.  (In some cases, it might even be a good idea to call them before filing the petition to make sure you are doing everything correctly.)

Calling the Office of Petitions is a key step since you want to verify immediately that the petition was received and that, if the petition can be granted, it will be granted before the patent issue date.  As MPEP §1308 warns, “… while a petition to withdraw an application from issue may be granted as late as one day prior to the patent issue date, to avoid publication and dissemination, the petition decision must be granted at least 3 weeks prior to the issue date.”

As mentioned previously, there are two other ways to accomplish a withdrawal under 37 CFR 1.313(c).  Under section (1), the applicant can provide 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.”  While we can envision circumstances under which this approach might be appropriate, we would generally avoid it since making such statements can open a Pandora ’s Box of issues including alleged inequitable conduct.

Still a further alternative is section (3) which involves filing a continuing application under 37 CFR 1.53(b) and then expressly abandoning the earlier application.  The usual “RCE vs. CON” factors will come into play when evaluating this option.  However, for a host of reasons—expense being a major one—starting over with an entirely-new application is often undesirable.

Not only is filing a continuation application more expensive than an RCE, but importantly, if the applicant withdraws the application under 1.313(c)(2) by filing an RCE and the application is again found allowable, it is possible to “reapply” the previously-paid issue fee toward the subsequent issue fee.  See MPEP § 1306.  Conversely, if the applicant expressly abandons the earlier application in conjunction with 1.313(c)(3), the previously-paid issue fee is lost.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice.  Please contact one of our attorneys to learn more about this or any other aspect of intellectual property law.