Two USPTO notices sound almost identical yet carry very different consequences: Notice of Allowability and Notice of Allowance. Confusing them can cost time, money, and sometimes the application itself.
This guide explains each notice and shows how they fit into prosecution. You’ll also see how our patent lawyers can provide a simple yet comprehensive plan to act on them quickly and correctly.
TL;DR
- A Notice of Allowability (PTOL-37) tells you the claims are allowable and may include an examiner’s statement of reasons for allowance when the examiner believes clarification of the record is helpful. It may also flag formalities to fix.
- A Notice of Allowance (PTOL-85) is the bill to issue. It starts a non‑extendable 3‑month clock to pay the issue fee.
- You can still make limited, formal changes after a Notice of Allowance, but substantive claim changes require special steps and timing.
- Miss the issue‑fee deadline, and the application is abandoned, though revival may be possible if the delay was truly unintentional.
What Each Notice Means
Patent applicants often receive official correspondence from the USPTO without fully grasping the distinct legal implications and next steps each document triggers. These are specific functions and requirements of both notices, so you can respond appropriately and avoid costly procedural mistakes.
Overview of Notice of Allowability
A Notice of Allowability uses USPTO form PTOL‑37. Examiners issue it when an application is in condition for allowance. It may include an optional Statement of Reasons for Allowance, which briefly explains what persuaded the Office that the claims are patentable when the examiner believes clarification of the record is warranted.
The Notice of Allowability may also be bundled with other items, such as a requirement to supply an inventor’s oath or declaration under the AIA rules. By itself, it does not demand payment of the issue fee and does not start the 3‑month payment clock, as per MPEP 1302.03 and 1302.14.
At this stage, strategic review matters. Our attorneys analyze the examiner’s allowance position and confirm that all formal requirements are properly scoped. We can also advise whether comments on the Reasons for Allowance are appropriate to protect future enforcement and continuation strategy before the case advances toward issuance.
Overview of Notice of Allowance
A Notice of Allowance uses form PTOL‑85 (with PTOL‑85B as the fee transmittal). This is the formal green light to pay the issue fee. The Notice of Allowance starts a firm, non-extendable 3-month period to pay the issue fee.
Although a publication fee line item may appear on the notice, the publication fee has been set to $0 since January 1, 2014. Failing to pay on time, the application is abandoned, per 37 CFR 1.316.
At this stage, timing and execution are critical. Our attorneys calendar and monitor the non-extendable issue-fee deadline, confirm that all allowance-stage requirements (including inventor oaths/declarations and drawings) are fully satisfied. We can also advise whether any narrowly tailored post-allowance amendments or pre-issuance continuation filings should be considered before the issue fee is paid.
Essential Distinctions Between PTOL-37 and PTOL-85
This quick-reference table helps you immediately identify which stage your application has reached and what actions you must take to secure your patent rights.
| Feature | Notice of Allowability (PTOL‑37) | Notice of Allowance (PTOL‑85/85B) |
| What it says | Claims are allowable; may include reasons for allowance; may list formalities to fix | Application is allowed; issue fee and any publication fee are now due |
| Deadline it triggers | No issue-fee deadline; response periods depend on specific attachments like an Ex parte Quayle action. Any outstanding oath or declaration must be submitted before or alongside the eventual issue-fee payment. | Non‑extendable 3‑month deadline to pay the issue fee; missing it causes abandonment |
| Typical attachments | Reasons for Allowance; sometimes Notice Requiring Inventor’s Oath or Declaration | PTOL‑85B fee transmittal showing amounts due |
| What you can change | Continue clearing formalities; prepare for allowance | Only limited post‑allowance amendments under 37 CFR 1.312 before or with issue‑fee payment |
| Governing sources | MPEP 1302.03, 1302.14 | 37 CFR 1.311, 1.316; MPEP 1303 |
Confusing PTOL-37 and PTOL-85 is one of the most common and costly mistakes we see. Our patent law firm routinely reviews USPTO notices the day they issue, identifies which deadlines actually apply, and calendars non-extendable issue-fee deadlines to ensure nothing slips through the cracks.
Why the Distinction Matters for Deadlines and Strategy
The Notice of Allowability serves as a preliminary confirmation that the claims are patentable on their merits, allowing you to tie up loose ends before the final grant. If only formal issues remain, the Office may issue an Ex parte Quayle action, per MPEP 714.14, which closes prosecution on the merits and sets a 2-month shortened statutory reply period to fix formality problems.
The Notice of Allowance is a pay‑now instruction with a hard stop. The 3‑month payment window cannot be extended. If you miss it, the case is abandoned by rule, and you must seek revival if the delay was unintentional, with payment of the issue fee and petition requirements as per 37 CFR 1.137.
Before the issue fee is paid, there is often a narrow but critical window to correct drawings, resolve oath or declaration issues, or decide whether to pursue continuation or divisional applications. In this stage, we can guide applicants in evaluating these options before issuance when leverage still exists.
What You Can Still Do After a Notice of Allowance
Once the USPTO grants allowance, many applicants assume their prosecution options have ended, but specific amendments remain permissible under certain conditions. Knowing these limited post-allowance procedures can help you make final refinements without jeopardizing your application or incurring abandonment.
- Make limited, formal amendments under 37 CFR 1.312 before or with the issue‑fee payment. Substantive changes are not a matter of right.
- If you need to reopen prosecution for more than formal fixes, consider withdrawing from the issue or filing an RCE. Withdrawal from the issue is controlled by 37 CFR 1.313 and has tight timing rules, especially after the issue fee is paid.
Post-allowance changes require careful handling. We assess whether a proposed amendment qualifies under 37 CFR 1.312, whether withdrawal from issue is strategically justified, or whether filing an RCE is the safer path. This prevents applicants from jeopardizing allowance or unintentionally narrowing the enforceable claim scope.
How These Documents Show Up Together
You may receive a Notice of Allowability (PTOL-37) and a Notice of Allowance (PTOL-85) close together or even in the same mailing. There may be situations when an application is otherwise allowable but still lacks a compliant inventor’s oath or declaration.
In such cases, the USPTO may issue PTOL-85 together with PTOL-37 and an attached Notice Requiring Inventor’s Oath or Declaration. These must be satisfied no later than payment of the issue fee to avoid abandonment.
Examples
These case studies highlight the practical consequences of administrative actions within the actual timeline of patent prosecution.
Startup With Drawing Fixes
A startup receives a Notice of Allowability that includes reasons for allowance and notes that two figures need correction for publication quality. No fee is due yet. Two weeks later, the examiner sends an Ex parte Quayle action giving 2 months to submit corrected drawings.
The company files new drawings, then receives the Notice of Allowance and pays the issue fee within the 3‑month window. The patent proceeds to grant on schedule.
Missed Issue‑Fee Payment and Revival
An applicant receives a Notice of Allowance but misses the 3‑month payment deadline. The application is abandoned by rule. Counsel files a petition to revive under 37 CFR 1.137 with the required fee, a statement that the entire delay was unintentional, and the issue‑fee payment.
Because the failure was not a deliberate decision to let the case lapse, the Office may grant revival if the petition requirements are met and the entire delay was unintentional. If the nonpayment had been an intentional cost‑saving choice, revival would likely be refused.
Actionable Steps / Checklist
Following these chronological tasks helps applicants manage non-extendable deadlines and ensure all formal documentation is perfect before the patent is granted.
- Read the header and confirm whether your document is PTOL‑37 (Allowability) or PTOL‑85 (Allowance).
- If PTOL‑37, note any formal requirements and satisfy them promptly.
- Review any Reasons for Allowance. Decide if you want to file optional comments.
- If an Ex parte Quayle action arrives, calendar the 2‑month shortened statutory period. Use extensions only if truly needed.
- If PTOL‑85, calendar the non‑extendable 3‑month issue‑fee deadline immediately.
- Prepare any 1.312 amendment you truly need and file it before or with the fee.
- Verify oath/declaration and assignment records are complete, and drawings are publication‑ready.
- If circumstances change after allowance, evaluate RCE or withdrawal from issue under 37 CFR 1.313 before paying the issue fee.
- If you miss the issue‑fee deadline, act quickly on a petition to revive under 37 CFR 1.137 and be ready to certify the delay was unintentional.
Glossary
Learn how to define these technical legal terms to distinguish between similar-sounding notices and their respective legal implications.
- Notice of Allowability: USPTO notice (PTOL‑37) stating claims are allowable; may include reasons and formal requirements to fix.
- Notice of Allowance: USPTO notice (PTOL‑85/85B) that starts a 3‑month, non‑extendable deadline to pay the issue fee.
- Reasons for Allowance: Examiner’s brief explanation of why the claims are patentable; applicants may comment.
- Ex parte Quayle Action: Office action closing prosecution on the merits and giving time to correct formalities only.
- Issue Fee: Fee due after allowance to have the patent issue; failure to pay within 3 months causes abandonment.
- Amendment After Allowance: Limited changes permitted under 37 CFR 1.312 before or with issue‑fee payment.
- Withdrawal From Issue: Procedure under 37 CFR 1.313 to pull a case from issue for further action in limited situations.
- Petition to Revive: Request under 37 CFR 1.137 to reinstate an abandoned application based on unintentional delay.
FAQ
Q: Does a Notice of Allowability mean I need to pay the issue fee now?
A: Payment is triggered by the Notice of Allowance (PTOL‑85), not by a Notice of Allowability.
Q: Can I still tweak the claims after a Notice of Allowance?
A: You can tweak the claims after a Notice of Allowance only in a limited way under 37 CFR 1.312 before or with the issue‑fee payment. Substantive changes typically require withdrawing from the issue or filing an RCE.
Q: What happens if I miss the 3‑month issue‑fee deadline?
A: Should you miss the 3-month issue-fee deadline, the application is abandoned by rule. Revival may be available if the entire delay was unintentional, and you must pay the issue fee with the petition.
Q: Do I need to respond to the examiner’s Reasons for Allowance?
A: No response is required, but you may file brief comments if you think clarification helps the record.
Q: Why did I receive both a Notice of Allowance and a Notice of Allowability?
A: In some AIA cases, the Office pairs the allowance with a Notice of Allowability that includes an oath/declaration requirement due no later than payment of the issue fee.
Final Thoughts
Treat the Notice of Allowability as your final tune‑up and the Notice of Allowance as your starting gun to pay. If you calendar the right deadlines, make only necessary post‑allowance changes, and keep formalities current, you will move from allowance to grant without surprises.
When you receive a Notice of Allowability or Notice of Allowance, you’ll want confirmation that deadlines, formalities, and post-allowance options are being handled correctly. Let’s start with a free strategy call to discuss how we can provide allowance-stage reviews focused on risk reduction, claim integrity, and smooth transition from prosecution to issuance.
