撤回領證案 - MPEP 1308

筆記

甚麼情況下已領證專利會被撤回？

從MPEP 1308與37 CFR 1.313可知幾個情況：

一、申請人主動撤回
對於已經繳付領證費的專利申請案，申請人可以提出請願（petition）要求撤銷（下架），並需要提出充分的理由（如下），還有費用（請願費用現行如下）。如果在繳費前，可以在繳費期限內請求接續審查（指RCE）就不用提出請願了。

兩個情況：核准通知後，領證費用繳費前、繳費後。

繳交領證費前，申請人可以透過提出請願、接續審查（RCE），並可伴隨IDS或是修正。這時，依照申請人佈局，也是提出接續案的時機（continuing application）。

繳交領證費後，申請人應透過請願（petition）程序要求撤回領證專利，伴隨著請願的條件是：指出核准專利的重要缺陷，如以下請願理由。

請願理由：
(1)一或多個權利項不具專利性，並可提出修正，並說明這些修正可讓請求項具有專利性理由；
(2)考慮RCE；或者
(3)表示要拋棄申請案。（佈局策略上這可以是為了要reopen申請案後，提出其他接續案）

• (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.

請願費用（Petitions requiring the petition fee set forth in 37 CFR 1.17(h) (Group III)）：
By a micro entity (§ 1.29)......$35.00
By a small entity (§ 1.27(a))......$70.00
By other than a small or micro entity......$140.00

可以對照現行領證費用（Utility issue fee）：
大實體：960.00；小實體：480.00；微實體：240.00

二、USPTO撤回，USPTO其實不會撤回已經繳付領證的申請案，除非（反過來說，USPTO可基於某些因素撤銷專利權）：
(1)專利局有疏失；
(2)違反37 CFR 1.56（Duty to disclose information material to patentability），也就是發現申請人違反提出影響專利性的資訊揭露義務，這些資訊揭露包括：外國專利局引用前案、影響專利權的資訊等等；
(3)一或多項專利範圍不具專利性；或者
(4)面對牴觸程序（interference）或是申請人調查程序/派生（derivation proceeding）。

• • 
    
  • (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.

後續：
經撤回領證的專利申請案，若又再次核准，USPTO會重新發出核准通知。

如果申請人/專利權人在之前領證時已經繳付領證費，是否可以退費？
這裡提到可以退費，也可以暫存於某個戶頭中用於下次費用。

[相關法條摘錄]
MPEP 1308 WITHDRAWAL FROM ISSUE

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If the applicant wishes to have an application withdrawn from issue, he or she must petition the Director under 37 CFR 1.313(a) or file a request for continued examination (RCE) under 37 CFR 1.114 with a submission and the fee set forth in 37 CFR 1.17(e). A submission may be an information disclosure statement (37 CFR 1.97 and 1.98) or an amendment. The RCE practice does not apply to utility or plant applications filed before June 8, 1995 and design applications. See MPEP § 706.07(h), subsections I, II and IX. If an applicant files a RCE (with the fee and a submission), the applicant need not pay the issue fee to avoid abandonment of the application. 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).

II.WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE

Once the issue fee is paid, withdrawal is permitted only for the reasons stated in 37 CFR 1.313(c). The status of the application at the time the petition is filed is determinative of whether the petition is considered under 37 CFR 1.313(a) or 37 CFR 1.313(c). Petitions under 37 CFR 1.313(c) to have an application withdrawn after payment of the issue fee should be directed to the Office of Petitions (see MPEP § 1002.02(b)).

In addition to the specific reasons identified in 37 CFR 1.313(c)(1)-(3) applicant should identify some specific and significant defect in the allowed application before the application will be withdrawn from issue. A petition under 37 CFR 1.313(c) based on the reason specified in 37 CFR 1.313(c)(2) can only be filed in utility or plant applications filed on or after June 8, 1995 because the request for continued examination (RCE) practice does not apply to these types of applications filed before June 8, 1995 and design applications. See MPEP § 706.07(h), subsections I and IX. Such a petition under 37 CFR 1.313(c)(2) along with the petition fee set forth in 37 CFR 1.17(h) must include a request for continued examination in compliance with 37 CFR 1.114 (e.g., a submission and the fee set forth in 37 CFR 1.17(e)). The continued prosecution application (CPA) practice under 37 CFR 1.53(d) only applies to design applications. SeeMPEP § 201.06(d). To withdraw from issue a utility or plant application, an applicant may wish to file a petition under 37 CFR 1.313(c)(2) with a RCE or under 37 CFR 1.313(c)(3) for the express abandonment of the application in favor of a continuing application under 37 CFR 1.53(b).

37 CFR 1.313  Withdrawal from issue.

• (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.

MPEP 1308.01 Rejection After Allowance
...

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.

資料參考：
https://www.uspto.gov/web/offices/pac/mpep/s1308.html

Ron