How to Withdraw a Patent

By Tom Streissguth

If you've taken the first tentative steps into the patent application maze, you might soon be having second thoughts. The law is complex and the U.S. Patent and Trademark Office lays out the application procedures in bewildering bureaucratic language that can try the patience of the most experienced patent attorneys. The rules permit you to withdraw your application, however, if this would help you prepare and take another action for which you need more time. You may also file an "express abandonment," dropping the application completely. If you follow the USPTO timetable, you can avoid any public disclosure of your designs and ideas.

If you've taken the first tentative steps into the patent application maze, you might soon be having second thoughts. The law is complex and the U.S. Patent and Trademark Office lays out the application procedures in bewildering bureaucratic language that can try the patience of the most experienced patent attorneys. The rules permit you to withdraw your application, however, if this would help you prepare and take another action for which you need more time. You may also file an "express abandonment," dropping the application completely. If you follow the USPTO timetable, you can avoid any public disclosure of your designs and ideas.

Petition for Withdrawal

In order to withdraw a patent application, you must file a petition with the U.S. Patent and Trademark Office. The petition is filed in accordance with 37 CFR ยง1.313, the federal statute governing patent withdrawals. In the language of patent law, you are asking for a "withdrawal from issue," and must show good cause why the withdrawal is necessary. At the time of publication, the filing fee for the petition is $130. The USPTO generally grants these petitions unless you have already paid the issue fee, in which case another procedure is involved.

File a provisional application for patent online. Get Started Now

Issue Fee

If you've already paid the issue fee, the USPTO will not allow you to withdraw the patent, unless you meet certain conditions. The claim must be "unpatentable," meaning it won't meet the guidelines for issuance and you must file a statement or brief explaining your reasoning. Or, you may withdraw pending your request for continued examination by the USPTO, meaning the application has been denied or is under appeal. Finally, an applicant may withdraw by an express abandonment.

Express Abandonment

An express abandonment means filing a different petition (Form PTO/SB/24, Express Abandonment) in which you state your desire to drop the application completely, with no intention of filing amendments, appeals or otherwise pursuing the matter. You may request a refund of certain fees charged by the USPTO, including the search fee. If you wish to avoid publication of your application, you must file a form that specifically requests that (Form PTO/SB/24A, Petition for Express Abandonment to Avoid Publication).

Avoiding Publication

Normally the USPTO publishes a patent application 18 months after you submit the first document to open the case. If you succeed in withdrawing the patent before publication, the "Pre-Grant Publication" application number survives, but the USPTO will publish no documents in connection with the application. Before publication, the agency keeps the application itself, as well as any designs or documents you've submitted, confidential.

File a provisional application for patent online. Get Started Now
How to Withdraw & Reissue a Patent

References

Related articles

DIY: How to File for a Non-Provisional Patent

A patent protects your right to use and profit from an invention. Many individuals and businesses retain patent attorneys or patent agents to represent them in the application process, especially if the technology is complex or litigation is likely. Absent these complicating factors, it is possible to file a patent application on your own. In the United States, the U.S. Patent and Trademark Office (USPTO) administers the examination and approval of patent applications. A non-provisional patent is valid for the full patent term – in most cases 20 years.

What is a Notice of Allowance Patent?

When the United States Patent and Trademark Office (USPTO) intends to issue a patent, it sends the applicant a Notice of Allowance. For this to happen, an inventor provides information such as product description, design, and blueprints or drawings. A patent examiner then processes the patent application, and ultimately decides whether a patent should be issued. Thomas Jefferson and two friends were the first patent examiners, and granted America's first patent in 1790. Although opposed to monopolies of any kind, Jefferson recognized that inventors must have exclusivity over their products to encourage inventors to create new products.

Is it Illegal to Publicize Inventions Without Applying for a Patent?

In the world of patent law, you must follow a myriad of technical rules to secure a patent for your invention. One small misstep can cost you the ability to protect your product. Although it's not illegal to publicize an invention that isn't patented, doing so may cost you the ability to get a patent on the invention when you want one.

Start here. LegalZoom. Legal help is here. LLCs. Corporations. Patents. Attorney help.

Related articles

What Can Companies Do to Protect Their Patent Before It Is Approved?

You've filed your patent application and the long wait has begun. Your application may even have been published by the ...

How to Nullify a Patent

To protect an original invention, an individual or organization can file for a patent from the United States Patent and ...

Final Rejection Patent Meaning

Receiving a final rejection on your patent application may sound ominous. The U.S. Patent and Trademark Office, ...

How to Amend a Patent

When inventors talk about amending a patent, they usually mean amending a patent application. Amendments of patent ...

Browse by category