1308 Withdrawal From Issue
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This section covers the withdrawal of an application from issue. Specific topics discussed include the withdrawal from issue at the initiative of the applicant both prior to and after the payment of the issue fee. Withdrawal from issue at the initiative of the Office is also covered. 
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(a) Applications may be withdrawn from issue for further action at the initiative of the Office or upon petition by the applicant.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 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(c) Once the issue fee has been paid, the application will not be withdrawn from issue upon petition by the applicant for any reason except: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.
I. WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE APPLICANT
A. Prior to the Payment of Issue Fee
If the applicant wishes to have an application withdrawn from issue, he or she must petition the Director under 37 CFR 1.313(a) or file a request for continued examination (RCE) with a submission and the fee.
- A submission may be an information disclosure statement or an amendment.
Applicants are cautioned against filing a RCE prior to payment of the issue fee and subsequently paying the issue fee (before the Office acts on the RCE) because doing so may result in issuance of a patent without consideration of the RCE (if the RCE is not matched with the application before the application is processed into a patent).
Applicant may also file a continuing application on or before the day the issue fee is due and permit the parent application to become abandoned for failure to pay the issue fee
B. After the Payment of Issue Fee
Once the issue fee is paid, withdrawal is permitted only for the reasons stated in 37 CFR 1.313(c).
In addition to the specific reasons identified in 37 CFR 1.313(c) applicant should identify some specific and significant defect in the allowed application before the application will be withdrawn from issue.
The Office cannot ensure that any petition under 37 CFR 1.313(c) will be acted upon prior to the date of patent grant.
Once a petition under 37 CFR 1.313(c)(1) or (c)(2) has been granted, the application will be withdrawn from issue, the applicant’s submission(s) will be entered, and the application forwarded to the examiner for consideration of the submission and further action.
II. WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE
The Director may withdraw an application from issue under 37 CFR 1.313 on his or her own initiative.
The Office may withdraw an application after payment of the issue fee on ground of “unpatentability of one or more claims.”
35 U.S.C. 151 and 37 CFR 1.313(b) do not authorize the USPTO to withdraw an application from issue after payment of the issue fee for any reason except:
- (1) a mistake on the part of the Office:
- (2) a violation of 37 CFR 1.56 or illegality in the application;
- (3) unpatentability of one or more claims; or
- (4) for interference or derivation.
Examples of reasons that do not warrant withdrawing an application from issue after payment of the issue fee at the initiative of the Office are:
- (A) to permit the examiner to consider an information disclosure statement;
- (B) to permit the examiner to consider whether one or more claims are unpatentable; or
- (C) to permit the applicant to file a continuing application (including a CPA).
III. HANDLING OF APPLICATIONS THAT CONTAIN AN EXAMINER'S AMENDMENT
When an application is withdrawn from issue, either at the initiative of the applicant or by the Office, and the application contains an examiner’s amendment, the claims as amended by the examiner’s amendment are the claims subject to further examination.
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