What is a notice of allowance in patent prosecution?
A notice of allowance is the USPTO's written communication to an applicant that the pending patent application has been found to satisfy all statutory conditions for patentability and that a patent will be granted once the required fees are paid.
The two documents in the allowance process
Two related but distinct documents arise when an application is allowed.
The Notice of Allowability (Form PTOL-37) is issued by the USPTO when an application meets the conditions for allowance.
The Notice of Allowance and Fee(s) Due (Form PTOL-85) is the formal document mailed to the applicant upon allowance. The PTOL-85 specifies the issue fee and any required publication fee the applicant must pay. Part B of the PTOL-85 (PTOL-85B) is the fee transmittal section applicants should return with the issue fee payment. Page 3 of the PTOL-85 contains the USPTO's calculation of any patent term adjustment under 35 U.S.C. § 154(b).
The fee payment deadline
The issue fee and any required publication fee must both be paid by the deadline stated on the notice, and that deadline is not extendable under 37 CFR 1.311(a). Failure to pay by that deadline causes the application to be regarded as abandoned and no patent will issue.
An application abandoned for failure to pay the issue fee may be revived by petition under 37 CFR 1.137 if the entire delay in payment was unintentional.
After the fees are paid
Upon timely payment of the required fees, the patent may be issued. A granted utility patent's term begins on the date the patent issues and is measured from the earliest effective U.S. filing date under 35 U.S.C. § 154(a). The patent term adjustment provisions of 35 U.S.C. § 154(b) may extend that term to compensate for certain USPTO delays that occurred during prosecution.
Practical notes for practitioners
Calendar the deadline the day the PTOL-85 arrives. The deadline stated on the notice is not extendable. Build in an internal reminder well before the stated date rather than relying on a docketing alert set to fire at the last moment.
Audit the patent term adjustment on page 3. The PTOL-85 includes a USPTO-calculated PTA figure on page 3. If the calculation appears to omit delays attributable to the USPTO during prosecution, the period before issuance is the right time to flag discrepancies, while the prosecution history is fresh.
Cross-check the allowed claims before paying. Before submitting the issue fee, confirm that the set of allowed claims matches your docketed record. If a claim that was pending appears to have been inadvertently omitted, address the discrepancy before the patent issues rather than after.
Use the PTOL-85B fee transmittal form. The Part B form included with the notice is designed to accompany the issue fee payment. Submitting payment on this form, or through the USPTO's electronic payment system keyed to the application number, reduces the risk of the payment being misapplied to the wrong application.