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Question:
Can a petition under 37 CFR 1.138(c) stop publication of an application?
Answer:
A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in sufficient time to avoid publication of the application. The petition will be denied when it is not recognized in time to avoid publication.
Generally, a petition under 37 CFR 1.138(c) will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication. It is unlikely that a petition filed within four weeks of the projected date of publication will be effective to avoid publication. Also note that withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of an application under 35 U.S.C. 122(b).
Chapter Details:
The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.
The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 711.01 of the MPEP. The following is a brief summary of section 711.01.
711.01 Express or Formal Abandonment
This section discusses the details of express or formal abandonment. For instance, the applicant or the attorney/agent of record, if any, can sign an express abandonment. Details are provided where a letter of express abandonment is being submitted in an allowed application after the payment of the issue fee, to avoid publication of an application, to obtain a refund of the search and excess claims fee, and an application in interference.