MPEP Section 1308.01, Rejection After Allowance
This document contains one section of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Fifth Revision (August 2006). This page was last updated in July 2007. You may return to the section index to find a particular section. Alternatively, you may search the MPEP use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the MPEP in the pop-up list.
1308.01 Rejection After Allowance [R-5]
A claim noted as allowable shall thereafter be rejected only with the approval of the primary examiner. Great care should be exercised in authorizing such rejection. See MPEP § 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in issue, a memorandum is addressed to the Technology Center (TC) Director, requesting that the application be withdrawn from issue for the purpose of applying the new reference. This memorandum should cite the reference, and, if need be, briefly state its application. The memorandum should be submitted with the reference and the file wrapper, if the application file is in paper. If the examiner's proposed action is not approved, the memorandum requesting withdrawal from issue should not be placed in the file.
If the request to withdraw from issue is approved, the TC Director should withdraw the application from issue as explained in MPEP § 1308. After the TC Director has withdrawn the application from issue, the examiner will prepare an Office action stating that the application has been withdrawn from issue, citing the new reference, and rejecting the claims met thereby.
The action is given a paper number and placed in the file. For Image File Wrapper (IFW) processing, see IFW Manual.
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. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied (the Notice of Allowance will reflect an issue fee amount that is due ** and the issue fee that was previously paid). >See MPEP § 1306 regarding request to reapply a previously paid issue fee toward the issue fee that is now due in the same application.< If abandoned, applicant may request refund or credit to a deposit account.