Timing of the Notice of Allowance, Issue Fee Payment, and Patent Issuance

A Patently-O reader asked a question about the timing of a patent’s issuance and whether the date of issue-fee payment affects the issue date.  i.e., whether “the patent will issue on the same day regardless of whether the issue fee is paid immediately after receiving the notice of allowance or waiting until the statutory deadline to pay.  Any thoughts?”

To answer this question, I pulled-up the file histories for 630 patents issued on June 8, 2010 and created a table comparing the respective dates of (1) the notice of allowance, (2) payment of the issue fee, and (3) issuance of the patent. I limited the sample to include only payments made within the statutory three-month window. Some file histories included multiple notices of allowance. For those, I only looked at the last-mailed notice.

Answer: As the charts shows below, the timing of issuance is closely correlated with timing of the payment of the issue fee. In my sample, 88% of the patents issued within 6–8 weeks of payment of the issue fee. Those that took longer were, for the most part, associated with older applications.  In addition, the delay was greater for applicants that waited until the deadline to pay the issue fee.

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The second chart shows a histogram of delay from the payment of the issue fee until patent issuance. Most patents issue in the sixth-week after payment.

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The final chart shows patent applicant delay in payment of the issue fee. The chart was created by comparing the date of issue fee payment to the three-month payment deadline. More than 50% of applicants waited until the the week of the deadline to pay their issue fee. Why the delay?

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43 thoughts on “Timing of the Notice of Allowance, Issue Fee Payment, and Patent Issuance

  1. “MM, what’s your practice…”

    LOL

    MM’s practice is limited to posting incessantly on PatentlyO and talking about “his clients.” I just wish he would pay more attention to the french fries.

  2. For Former American: You cannot extend the time for payment of the issue fee. If you miss it due to inadvertent error, you can revive. However, if you miss it because the client has budget issues, or you want more time to consider things, or whatever, a petition to revive is out of the question. Docketing error and a heart attack while uploading are good excuses, while indecision or low budget are no excuse at all.

  3. Excuse the digression, but in the U.S. can one merely pay an extension fee for missing the payment of the NoA, or is a revival necessary?

  4. Just a minor observation on what c-n-r writes:

    The EPO sends to the attorney of record a full copy of the docs intended for grant, from page 1 of the spec through to the last sheet of drawings. Crazy, you might think, but it makes sense because, at the EPO, the spec to issue must be in strict conformity with the allowed claims. There must be no discrepancy between what the claims define as the invention and what the spec describes as embodiments of the invention. Crazy you might think but it’s necessary because in Europe issued patents are to be understood from the issued patent alone, not the library you call the file wrapper.

    So, what the EPO shows you as the text intended for grant will likely have amendments in the spec that are, for you guys, more deeply troubling than the content of the allowed claims. Best check it carefully before it goes to issue, for you will be held to it, post-issue.

  5. This seemingly trivial point allows EPO Examiners, oftentimes, to isue a Notice of Allowance instead of a string of objections.

    A helpful US examiner might send a notice of allowance with examiner’s amendments in those situations, or a Quayle, though there’s no guarantee you won’t get a 112 or an objection.

    What you get is a listing of the various pages of spec and claims and the dates on which you filed them at the EPO.

    That’s probably the major snag in porting this practice to the US. US specs are amended by the paragraph, not by the page. You can’t just go back into the history and pull out pieces that can be assembled to make the final publication. At least claims are amended by providing a marked-up full claim listing, but they no longer require a clean version.

  6. “But this EPO practice point won’t translate to the USA either, will it?”

    Too bad. It does work fairly well.

  7. “I can see it possibly being problematic at the PTO because they don’t currently prepare the final version in time to send with the notice of allowance.”

    It’s not a “final version” from the EPO, either – nothing formal, that is.

    What you get is a listing of the various pages of spec and claims and the dates on which you filed them at the EPO. Sometimes a page or 2 of the spec is sent along if the Examiner hand-wrote changes.

    Still, the system works. You are given enough information to be certain they’re taking the correct version of your claims and any amendments you have made to spec or drawings along the way.

  8. Ah IANAE, but are they brave enough to attempt it. Every time the USPTO tries to foist work onto Applicant it is greeted with a storm of protest.

    Mind you, it kind of fits the deal, doesn’t it. If you want a patent, come forward with a proposal that we can take to issue.

    Or, in the even more vernacular: If you don’t ask, you don’t get.

    Increasingly, the EPO “Druckexemplar” Intention to Issue text that is shown to Applicant carries various additions, hand-written by the Examiner. This seemingly trivial point allows EPO Examiners, oftentimes, to isue a Notice of Allowance instead of a string of objections.

    But this EPO practice point won’t translate to the USA either, will it?

  9. IANAE, what do you think of the EPO system:

    It’s a good system. I like the idea of having the check before the patent issues, and I like the idea that silence is deemed acceptance. I can see it possibly being problematic at the PTO because they don’t currently prepare the final version in time to send with the notice of allowance.

    I think mostly we’re collectively wondering whether it’s more efficient for the applicant rather than the PTO to produce the final clean version of the text to be published. And, I guess, whether the PTO would someday require applicants to do it anyway because it’s more efficient for the PTO if they don’t have to.

  10. Having to think about these issues is why we get paid the big bucks — especially while we wait for Bilski.

  11. IANAE, what do you think of the EPO system:

    1) EPO invites payment of Issue Fee and at the same time sends Applicant a copy of the spec, claims and drawings that will form the patent it is going to issue.

    2) If Applicant disapproves, burden on Applicant to argue it. Silence deemed acceptance.

    3) Applicant remits Issue Fee to EPO

    4) Patent issues.

    Reminds me of the system of calls between two rock climbers, A and B, half way up the Troll Wall, on opposite ends of a long rope and out of sight of each other. Neither comes off belay till the following rigorous sequence of calls is complete:

    A: Climb when ready!

    B: Climbing (but he doesn’t climb, till he hears)

    A: OK!

    That tried and tested, safe way, nobody is on the receiving end of a nasty surprise.

  12. Words are our tools. We should wield them with total precision.

    That’s absolutely hilarious from the likes of you Maxi.

    The addage of glass houses immediately comes to mind.

  13. “What’s interesting (and unfortunate) is that delaying payment of the issue results in 4-5 months before grant, and that’s 4-5 months during which Applicants remain bound by the duty to disclose under Rule 56.”

    MM, what’s your practice in citing references from OA’s issued in corresponding foreign apps once the issue fee has been paid?

  14. My point was that the most appropriate time to resolve these kinds of issues is *before the application is filed*.

    And yet I so rarely get phone calls from examiners before the application is filed, offering helpful tips for how to typeset my application so somebody in a completely different department of the PTO will have an easier time doing something the examiner never actually does.

    So you see, it really is the PTO’s fault after all.

    I’ve never understand why the US Patent Office didn’t shift that burden back onto the Applicant. For example, as part of the reply to the NOA, the Applicant must provide a clean version of the specification and claims, including all changes made during the prosecution.

    That’s not a bad idea. File a substitute spec with the issue fee. I guess one could do that voluntarily.

  15. Shift burden guy,as a follow-up: how are you going to get a client to pay for an attorney to “sweat over every detail” and “go through a multiple check procedure” for what is essentially a “done deal”?

    In reality, most patent practitioners would end up sourcing it to a low-level support staffer who is probably paid less than “some low level employee at the USPTO” and who has even less motivation or familiarity with patents. I think it would closely resemble Certificate of Correction practice where the attorney/agent might be budgeted 15-18 minutes to “review and approve” the final draft.

    Dennis, the reason for the delay is usually continuation/divisional practice and double-checking that all [McKesson] references have been cited in an IDS or reviewed for cumulativeness/relevance. Some clients allow immediate payent of the Issue fee, others require that we wait for instructions to file/not file a continuation/divisional, and some like to approve the actual claims before filing the continuation/divisional. It all takes time.

  16. Thanks for this very informative article.

    I know the reason for us not immidately paying the issue fee is there are other strategic issues need to be sorted out e.g. possible filing of a divisional application etc.

    Normally, these issues need client approval, which takes time. Also, drafting claims for the divisional or continuation also need additional time.

  17. If your application is entitled to PTA due to B-Period delay (issuing more than three years after filing), doesn’t early payment of the issue fee shorten the life of your patent? If you pay the issue fee the day you get the NOA, you lose almost three months at the end of the patent. If the patent is worth anything, those three months could be valuable. Only in very rare instances does a new patentee know of an infringer so that quick issuance is desirable on that basis. Is there any other reason to pay an issue fee early? Like advancing the time frame for filing a continuation (good for billing)? Avoiding an intervening citation in a corresponding foreign application (could cause a big delay)?

  18. Once again, Dennis, you provided great, new insite into patent practice.

    RE: “Someone has to piece together all the most recent versions of the spec and claims from all over the file history, renumber the claims.”

    I’ve never understand why the US Patent Office didn’t shift that burden back onto the Applicant. For example, as part of the reply to the NOA, the Applicant must provide a clean version of the specification and claims, including all changes made during the prosecution.

    First, that would save the US Patent Office huge amounts of money and time. Also, this would cut down the time between when the issue fee is paid and when the printed patent is issued. More important, the Applicant has a significant interest in ensuring that the patent issued correctly reflects the changes made during the prosecution.

    As a patent practitioner, I sweat over every detail to ensure my changes to the claims and spec are exactly want I intend. In addition, we go through a multiple check procedure to ensure this.

    Some low level employee at the USPTO doesn’t have the same motivation to ensure that the patent issued correctly reflects the changes made during the prosecution. My understanding is that they usually get it right (actually I don’t know and it would be interesting if Dennis could run a scan to find out the answer), but that still doesn’t mean they have the same motivation or familiarity with the prosecution as the patent practitioner handling the matter.

  19. The next time I’m in conversation with a fish on the subject of water, IANAE, I promise I’ll find out for you the answer to your question.

    At the EPO there are several reasons why one would pay a fee to delay paying the EPO issue fee. Like, gaining more time to put together a set of claims for a divisional application that will “do the business”. Like, gaining more time for making translations of the EPO patent into the languages of the Member States of the EPC. And so on.

  20. ping: “Not taking care of what should be taken care of at the appropriate time and then later laying the blame (for the delay) on the applicant seems to be exactly what you want to do. That don’t wash.”

    My point was that the most appropriate time to resolve these kinds of issues is *before the application is filed*.

  21. Oh dear, oh dear, oh dear ping, somebody at the USPTO has really got up your nose, hasn’t he? Did I say the culprit was blameless. On what basis did you jump to that inference? I can understand your annoyance, when a public servant does only half a job, causes delay and then has the effrontery and the impertinence to stick the blame for the delay on blameless you. Has the public servant thought through that your client might ignorantly hold its patent attorney responsible for the snafu?

    But “pretentious”? Really? Do you possess a good dictionary. If so, you might like to look it up.

    I’m sorry but it’s a pet dislike of mine: attorneys who are not in control of the words they use. Words are our tools. We should wield them with total precision.

  22. Paul: So presumably, the PTO could simply reduce its backlog by requiring a one month NOA response time, with the same extension fees as it now provides for those who want to delay responses to other office action deadlines [but limited to only two months of such extensions in this case]?

    I don’t understand how shortening the deadline will reduce the backlog, other than by reducing the number of applications that are sitting around waiting for payment, which aren’t the ones the PTO needs to work on anyway. I could see it reducing the wait time to issue, maybe, but you can do that now by paying the fee early.

    Also, I don’t really have a problem with giving the applicant 3 months to pay. Sure, the PTO could theoretically phone the agent and immediately get authorization to charge the issue fee, but are the three months hurting anyone?

    But mainly I find it a little odd to take an extension of time for paying a fee.

    Max: How often in America does one need a word that means “lacking social grace”?

    How often do fish need a word that means “water”?

  23. Hey Plurality of Sunshine,

    Get a grip. Try reading what I wrote before jumping to indignation and stow the it’s-not-my-fault running-for-cover attitude.

    I do not doubt that initial applications can be written poorly (in the sense of layout, scrunched words and gd-awful machine translations). But if you were paying attention at all, you would see that I said that this problem should have been taken care of well before the issue point (like when I said objected to in a FAOM).

    Not taking care of what should be taken care of at the appropriate time and then later laying the blame (for the delay) on the applicant seems to be exactly what you want to do. That don’t wash.

    Maxie,

    I could think of no better word than a French one for such pretentious attitude towards one’s customers. Why am I not surprised that you find issue with a comment on bad behavior, but appear to not see anything wrong with the bad behavior itself?

  24. ping: “Another thing to blame on sloppy Office work (failing to take the appropriate action at the appropriate time and then blaming the applicant later is so gauche).”

    Huh? If you file an application with formal problems in it, that’s fundamentally your fault. You can’t absolve yourself of all responsibility just because we’re here, and then throw whatever crap you like at the Office without expecting problems down the road.

  25. ping, I’m only joking, but, why the French? How often in America does one need a word that means “lacking social grace”? Are you advocating that PTO recruiters check out grasp of social graces, French style, before offering an American a position as trainee Examiner?

  26. “Such “poor quality filings” should have been objected to in the FAOM and resolved way before the point of issuance.

    Another thing to blame on sloppy Office work (failing to take the appropriate action at the appropriate time and then blaming the applicant later is so gauche).”

    if we’re talking about issue delays, any problems probably have to do with the fact that examiners have no contact with the printers until the printers find something wrong on their secret checklists, which examiners also have no contact with. it’s really amazing, when you think about it, that printer rushes are as rare as they are.

  27. “In addition, the delay was greater for applicants that waited until the deadline to pay the issue fee.”

    Is there a way to quantify this with the data you have, or would you need to collect more sample points?

  28. The PTO can’t issue a patent until one pays the issue fee. The PTO does not speculate whether issue fees will be paid. They take no action simply because a notice of allowance was mailed.

    On average, delay in issue fee payment will correlate to delay in issuance. This questions could have been answered without all of the graphs, but whatever.

  29. Such “poor quality filings” should have been objected to in the FAOM and resolved way before the point of issuance.

    Another thing to blame on sloppy Office work (failing to take the appropriate action at the appropriate time and then blaming the applicant later is so gauche).

  30. You’d have to ask the printers to be certain, but my guess on the biggest contributor to the delay between issue fee and issuance is the time it takes to OCR the application and then fix all the OCR errors that arise from poor quality filings. I’ve seen applications from Japan where the text justification causes the spacing between words to go down to almost nothing, which can cause the OCR program to interpret the line as all one gigantic word. And all that stuff has to be fixed by hand.

    Printer rushes (where some problem causes the printer to return the case to the examiner) are relatively infrequent, and examiners are supposed to work on them right away. Most issues that could potentially result in a printer rush are checked by a legal instrument examiner before the notice of allowance is mailed.

  31. “What’s the procedure after mailing notice of allowance? I thought the examiner’s file is removed from his office, and the application is sent off to “final data capture”. So why is there delay at all?”

    “The examiner’s file” is electronic these days. It’s all in a big database. Everything is done on the computer. The only printed material examiners actual have are printed copies of the applications that examiners can request.

    There can be delays from many, many things. For instance, applicants not putting dates on IDS for NPL, examiner amendments in the notice of allowance, etc.

  32. I am not aware of any STATUTORY reason why [in this era of electronic communications] the PTO stll allows applicants three months to simply pay issue fees in response to notices of allowance. I only noted this PTO Rule:
    Ҥ 1.316 Application abandoned for failure to pay issue fee.
    If the issue fee is not paid within three months from the date of the notice of allowance, the application will be regarded as abandoned.”

    So presumably, the PTO could simply reduce its backlog by requiring a one month NOA response time, with the same extension fees as it now provides for those who want to delay responses to other office action deadlines [but limited to only two months of such extensions in this case]?

  33. Does this particular applicant-caused issuance delay affect patent term calculation in any way? Should it?

  34. Re: “More than 50% of applicants waited until the week of the deadline to pay their issue fee. Why the [months of applicant patent issue] delay?”

    Good question, but I’m sure it includes a lot of the same hypocritical clients who are complaining loudly about the PTO backlog of patent issuance delays and why it can’t be reduced, and using deferred examination in other countries.

  35. aa For someone who claims not to work for the Office, you have a lot of Office insights and defend them a bit excessively.

    No offense to IANAE, but I didn’t see anything especially “insightful.” I think he was just stating the obvious in respose to Prior Art’s comment.

  36. together all the most recent versions of the spec and claims from all over the file history

    Like that would be difficult?

    For someone who claims not to work for the Office, you have a lot of Office insights and defend them a bit excessively.

  37. So why is there delay at all?

    Because someone has to piece together all the most recent versions of the spec and claims from all over the file history, process a bunch of bibliographic data, renumber the claims, and do no end of other clerical stuff. For thousands of patents every week. And good luck to you if Publications has to ask the examiner to do something he forgot to do before the patent can issue.

    Dennis, can you isolate the applications that had amendments after allowance? I understand that’s one of the things that can delay issuance.

  38. What’s the procedure after mailing notice of allowance? I thought the examiner’s file is removed from his office, and the application is sent off to “final data capture”. So why is there delay at all?

  39. Ditto to bleedingpen and Ned.

    What’s interesting (and unfortunate) is that delaying payment of the issue results in 4-5 months before grant, and that’s 4-5 months during which Applicants remain bound by the duty to disclose under Rule 56.

  40. Many times one wants to file a continuance before the patent issues — or at least to consider it. Typically, this requires not paying the issue fee until the continuing application is on file in order to assure that the patent does not issue while the decision is still pending.

  41. “More than 50% of applicants waited until the the week of the deadline to pay their issue fee. Why the delay?”

    Because the reporting letter to the client states that you have up until the deadline date in which to pay the issue fee and the client then waits until that date to send instructions/payment to the attorney of record.

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