Office of Petitions

01 - Requirements of a Petition

Each Petition has the following FIVE (5) general requirements:

Each Petition:
- MUST be in writing, 37 CFR 1.2:
  - All business with the USPTO is transacted in writing. The petition should be directed to the USPTO official delegated the authority to decide that petition. See MPEP Chapter 1000. Since different matters may be considered by different branches or sections of the USPTO, each distinct subject, inquiry or request should be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects. 37 CFR 1.4(c).
- MUST contain a statement of facts involved, the point(s) to be reviewed and the action requested, 37 CFR 1.181(b):
  - The care and completeness with which petitions are drafted can clearly influence the decision rendered. 37 CFR 1.181(b) sets forth the general requirements for the content of a petition. The petition must contain a statement of the facts involved, the point(s) to be reviewed and the action or relief requested. The petition submitted should be as complete as possible and any evidence necessary should be submitted. Any error(s) in a requirement or action on the part of the USPTO should be clearly set forth with the reasons why such requirement or action is considered improper.
- MUST be accompanied by a fee, if required, in order to avoid the petition being summarily dismissed, 37 CFR 1.181(d):
  - To avoid a petition being summarily dismissed for lack or insufficient fee, petitioner should make certain that the correct petition fee is submitted along with the petition. See the current fee sheet for guidance.
- MUST be timely filed, as required in 37 CFR 1.181(f), or as required in a specific statute or regulation:
  - Generally a petition not filed within two (2) months from the action complained of may be dismissed as untimely. Further, the mere filing of a petition will not stay the period for replying to an examiner's action that may be running against an application or act as a stay of other proceedings. 37 CFR 1.181(f).
- MUST comply with any specific requirements as provided by statute, regulation, or USPTO policy:
  - Care should be taken to review the applicable statute, regulation or USPTO policy to determine if there are other requirements that need to be met in submitting the petition.

02 - Where to File Petitions, Requests, and Related Inquiries With the Office of Petitions

Petitions, requests, and related inquiries, may be filed with the Office of Petitions using any of the following delivery methods:

EFS-Web (Web-based Electronic Filing System) accessible through the Electronic Business Center (EBC);
United States Postal Service (USPS) and addressed to: Mail Stop Petitions, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450;
Non-USPS Delivery Services and addressed to: United States Patent and Trademark Office Customer Service Window, Mail Stop Petitions, Randolph Building, 401 Dulany Street, Alexandria, VA 22314;
Facsimile transmission for all petitions, requests, and related inquiries must be directed to the USPTO Central FAX Number of 571-273-8300 unless otherwise indicated below;
- Petitions to Withdraw from Issue sent to the Central FAX Number should be marked "Special Processing Submission;"
- ONLY Petitions to Withdraw from Issue, in particular, URGENT Petitions to Withdraw from Issue where patent issuance is imminent, may be facsimile transmitted directly to the Office of Petitions at 571-273-0025; or
Hand Carry: United States Patent and Trademark Office Customer Service Window, located on the Ballenger Avenue side of the Randolph Building, 401 Dulany Street, Alexandria, VA 22314 (Hours of operation are 8:30 a.m. to midnight, Eastern Standard Time, Monday through Friday).

Further information regarding mailing and hand carry procedures and addresses for the USPTO may be obtained from:

Manual of Patent Examining Procedure (MPEP), Section 513, Deposit as Express Mail with U.S. Postal Service;
Mailing and Hand Carry Addresses for the United States Patent and Trademark Office.

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03 - Withdrawal from Issue

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.313, Withdrawal from issue.;
MPEP Section 1308, Withdrawal From Issue.

Petitions for Withdrawal from Issue at the initiative of the Applicant under 37 CFR 1.313(c) (MPEP § 1308,I):

After the Payment of the Issue Fee:
- Decided by the OFFICE OF PETITIONS;
- 37 CFR 1.313(c);
- MPEP § 1308, I,B;
- Petition Fee Required under 37 CFR 1.17(h), Fee Code 1464/2464/3464;

Any petition filed under 37 CFR 1.313(c) to withdraw an application from issue after payment of the issue fee should be clearly marked "Petition under 37 CFR 1.313(c)."

The USPTO CANNOT ensure that any Petition for Withdrawal from Issue under 37 CFR 1.313(c) will be acted upon prior to the date of patent grant; therefore it is highly recommended that any URGENT (i.e., where the issue date is imminent) Petition for Withdrawal from Issue under 37 CFR 1.313(c), AFTER PAYMENT OF THE ISSUE FEE, should be filed via:

EFS;
Directly facsimile transmitted to the OFFICE OF PETITIONS via 571-273-0025; or
Directly hand carried to the OFFICE OF PETITIONS (Bring petition to the Guards desk located on the west side of the Madison Building lobby (600 Dulany Street, Alexandria, VA); and
IMMEDIATELY AFTER an URGENT Petition for Withdrawal from Issue has been filed, the OFFICE OF PETITIONS should be alerted with a follow-up telephone call via 571-272-3282.

Before Payment of the Issue Fee:
- Decided by the Technology Center Director
- 37 CFR 1.313(a)
- MPEP § 1308,I,A
- Petition Fee Required under 37 CFR 1.17(e), Fee Code 1801/2801/3801.

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04 - EXPRESS Abandonment

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.138, Express abandonment;
MPEP Section 711.01, Express or Formal Abandonment;
MPEP Section 711.05, Letter of Abandonment Received After Application Is Allowed;

Petitions and Letters of EXPRESS Abandonment:

After the Payment of the Issue Fee:
- Decided by the OFFICE OF PETITIONS;
- Be accompanied by a Petition for Withdrawal from Issue under 37 CFR 1.313(c) and the requisite petition fee under 37 CFR 1.1.17(h), Fee Code 1464/2464/3464;
- 37 CFR 1.138;
- MPEP § 711.01,I;
- Petition Form PTO/SB/24; and
- Fee Required under 37 CFR 1.17(h), Fee Code 1464/2464/3464.

The USPTO CANNOT ensure that any Petition/Letter of Express Abandonment under 37 CFR 1.138(c) and accompanied Petition for Withdrawal from Issue under 37 CFR 1.313(c) will be acted upon prior to the date of patent grant; therefore it is highly recommended that any URGENT (i.e., where the issue date is imminent) Petition/Letter for Express Abandonment and Petition for Withdrawal from Issue under 37 CFR 1.313(c), AFTER PAYMENT OF THE ISSUE FEE, should be filed via:

EFS;
Directly facsimile transmitted to the OFFICE OF PETITIONS via 571-273-0025; or
Directly hand carried to the OFFICE OF PETITIONS (Bring petition to the Guard's desk located on the West side of the Madison Building lobby (600 Dulany Street, Alexandria, VA); and
IMMEDIATELY AFTER any URGENT Petition/Letter for Express Abandonment and Petition for Withdrawal from Issue has been filed, the OFFICE OF PETITIONS should be alerted with a follow-up telephone call to 571-272-3282.

Before Payment of the Issue Fee:
- To Avoid Publication of Application:
  - Decided by Pre-Grant Publication Division;
  - 37 CFR 1.138(c);
  - MPEP § 711.01,II;
  - Petition Form PTO/SB/24a;
  - Fee Required under 37 CFR 1.17(h), Fee Code 1464/2464/3464.
- To Obtain Refund of Search Fee and Excess Claims Fee:
  - 37 CFR 1.138(d);
  - MPEP § 711.01,III;
  - Petition Form PTO/SB24b.

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05 - Abandonment - Withdrawal or Revival

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.8, Certificate of mailing or transmission.;
37 CFR 1.10, Filing of correspondence by "Express Mail.";
37 CFR 1.181, Petition to the Director.;
37 CFR 1.137, Revival of abandoned application, terminated or limited reexamination prosecution, or lapsed patent.;
MPEP § 711.03(c), Petitions Relating to Abandonment.

Petitions to Withdraw a Holding of Abandonment;

Based on Failure to Receive an Office Action:
- Decided by OFFICE OF PETITIONS
- 37 CFR 1.181(a)
- MPEP § 711.03(c),I,A
Based on Evidence That a Reply Was Timely Mailed or Filed:
- Decided by OFFICE OF PETITIONS
- 37 CFR 1.181(a)
- MPEP§ 711.03(c),I,B
- 37 CFR 1.8(b) and (c)
- 37 CFR 1.10(c)-(h)
- Also see Petitions Related to Mailing to the Office

Petitions to Revive, Or Accept Late Payment of Issue Fee:

Petitions to Revive:
- Based on UNINTENTIONAL Delay:
  - Decided by the OFFICE OF PETITIONS;
  - 37 CFR 1.137(b);
  - MPEP § 711.03(c),II,C,1;
  - Petition Form PTO/SB/64;
  - Terminal Disclaimer Form PTO/SB/63 (When Required);
    - Required with utility/plant application filed before June 8, 1995;
    - Required with ANY design application regardless of its filing date;
  - Petition Fee Required under 37 CFR 1.17(m), Fee Code 1453/2453/3453.
- Based on UNAVOIDABLE Delay:
  - Decided by the OFFICE OF PETITIONS;
  - 37 CFR 1.137(a);
  - MPEP § 711.03(c),II,C,2;
  - Petition Form PTO/SB/61;
  - Terminal Disclaimer Form PTO/SB/63 (When Required);
    - Required with utility/plant application filed before June 8, 1995;
    - Required with ANY design application regardless of its filing date;
    - Petition Fee Required under 37 CFR 1.17(m), Fee Code 1452/2452/3453.
Based on Failure to Notify the Office of a Foreign Filing After Submission of a Non-Publication Request:
- Decided by the OFFICE OF PETITIONS
- 37 CFR 1.137(b);
- MPEP § 711.03(c),II,C,2;
- Petition Form PTO/SB/64a;
- Petition Fee Required under 37 CFR 1.17(m), Fee Code 1453/2453/3453.

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06 - Waiver or Suspension of Rules

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.183, Suspension of rules.;
The Following MPEP sections include discussions regarding waiver or suspension of the rules:
- MPEP § 201.03, Correction of Inventorship in an Application [R-5];
- MPEP § 402.10, Appointment/Revocation by Less Than All Applicants or Owners [R-5];
- MPEP § 602, Original Oath or Declaration [R-7];
- MPEP § 711.03(c), Petitions Relating to Abandonment [R-6].

Petitions Requesting Waiver or Suspension of any Rule provision that is not a requirement of any Statute:

For seeking relief from an extraordinary situation in which justice requires waiver or suspension of the rules;
Petition Fee Required under 37 CFR 1.17(f), Fee Code 1462/2462/3462.

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07 - Invoking Supervisory Authority of the Director of the USPTO

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.181, Petition to the Director.;
MPEP § 711.03(d), Examiner's Statement on Petition To Set Aside Examiner's Holding [R-2].

Petitions Requesting Supervisory Review:

Decided by the OFFICE OF PETITIONS when:
- supervisory review of a previous adverse decision by a Technology Center Director;
No petition fee is required.

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08 - Unintentionally Delayed Priority Claims

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.55, Claim for foreign priority.;
MPEP § 201.14, Right of Priority, Formal Requirements [R-5];
37 CFR 1.78, Claiming benefit of earlier filing date and cross-references to other applications.;
MPEP § 201.11, Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) [R-5].

Unintentionally Delayed Foreign Priority Claims:

Decided in the OFFICE OF PETITIONS
37 CFR 1.55(c);
Surcharge Required under 37 CFR 1.17(t), Fee Code 1454/2454/3454.

Unintentionally Delayed Domestic Benefit Claims:

Decided by the OFFICE OF PETITIONS
37 CFR 1.78(a)(3) and (6);
Surcharge Required under 37 CFR 1.17(t), Fee Code 1454/2454/3454.

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09 - Deferment of Issuance of Patents

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.314, Issuance of patent.;
MPEP § 1306.01, Deferring Issuance of a Patent [R-5].

Petitions Requesting Deferment of Issuance of a Patent:

AFTER payment of the Issue Fee:
- Decided by the OFFICE OF PETITIONS;
- Petition Fee Required under 37 CFR 1.17(h), Fee Code 1464/2464/3464;
BEFORE payment of the Issue Fee:
- NOT available.

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10 - Attorney or Agent Withdrawals

Manual of Patent Examining Procedure (MPEP), Rules (37 CFR), and Official Gazette (OG) Notice:

37 CFR 1.36, Revocation of power of attorney; withdrawal of patent attorney or agent.;
MPEP § 402.06, Attorney of Agent Withdrawals [R-5];
1329 OG 99 (08 Apr 2008), Change in Procedure for Requests to Withdraw from Representation In a Patent Application.

Petitions and Requests for Withdrawal as Attorney or Agent:

Decided by the OFFICE OF PETITIONS;
Request for Withdrawal as Attorney or Agent Form PTO/SB/83.

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11 - Matters not Specifically Provided For (37 CFR 1.182)

Rules (37 CFR):

37 CFR 1.182, Questions not specifically provided for.

Petitions under 37 CFR 1.182:

Decided by the OFFICE OF PETITIONS;
Allows for the filing of any petition regarding any matter that is not specifically provided for elsewhere in the rules;
Petition Fee Required under 37 CFR 1.17(f), Fee Code 1462/2462/3462.

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12 - Acceptance of Maintenance Fee Payments

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.377, Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.;
37 CFR 1.378, Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.;
MPEP Chapter 2500, Maintenance Fees;
- MPEP § 2580, Review of Decision Refusing to Accept and Record Payment of a Maintenance Fee Filed Prior to Expiration of patent [R-5];
- MPEP § 2590, Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent [R-7]

Petitions to Review Refusal to Accept and Record Maintenance Fee Payment Filed PRIOR to the Expiration of a Patent:

37 CFR 1.377(a);
Petition Fee Required under 37 CFR 1.17(g), Fee Code 1463/2463/3463;
- Where the Office erred, a Request for Refund of this petition fee if the refusal to accept and record the maintenance fee is determined to have resulted from an error by the Office.

Petitions for acceptance of Delayed Payment of a Maintenance Fee filed AFTER Expiration of a Patent:

UNAVOIDABLE DELAY:
- 37 CFR 1.378(b)
- Payment of the requisite Maintenance Fee:
  - Due at 3.5 years, Fee Code 1551/2551/3551;
  - Due at 7.5 years, Fee Code 1552/2552/3552;
  - Due at 11.5 years, Fee Code 1553/2553/3553;
- Payment of the requisite Surcharge:
  - Surcharge after expiration - Late payment is unavoidable, Fee Code 1557/2557/3557;
- Petition Form PTO/SB65;
UNINTENTIONAL DELAY:
- 37 CFR 1.378(c)
- Payment of the requisite Maintenance Fee:
  - Due at 3.5 years, Fee Code 1551/2551/3551;
  - Due at 7.5 years, Fee Code 1552/2552/3552;
  - Due at 11.5 years, Fee Code 1553/2553/3553;
- Payment of the requisite Surcharge:
  - Surcharge after expiration - Late payment is unintentional, Fee Code 1558/2558/3558;
- Petition Form PTO/SB/66;
- EFS-WEB Petition under 37 CFR 1.378(c):
  - Available to E-Filers;
  - Grants Petitions Automatically (will dismiss them too when applicable);
  - Quick Start Guide discussing:
    - Introduction;
    - Benefits;
    - Submission Process;
    - Data Entry Assistance;
    - Requirements;
  - Petition Form EFS-WEB PTO/SB/66;
  - Legal Framework for EFS-WEB.

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13 - General Supervisory Review by the Director

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.181, Petition to the Director.;
MPEP § 711.03(c), Petitions Relating to Abandonment [R-6].

Petitions for General Supervisory Review by the Director under 37 CFR 1.181:

Generally decided by the OFFICE OF PETITIONS;
Under 37 CFR 1.181(a), Petitions may be taken to the Director:
- From any action or requirement of any examiner in the ex parte prosecution of an application, which is not subject to appeal to the Board of Patent Appeals and Interferences or the court;
- In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Director; and
- To invoke the supervisory authority of the Director in appropriate circumstances.
Under 37 CFR 1.181(f):
- The mere filing of a petition under 37 CFR 1.181 WILL NOT stay any period for reply that may be running against the application,
  - nor act as a stay of other proceedings.
- Any petition under 37 CFR 1.181 NOT FILED WITHIN TWO-MONTHS of the mailing date of the action or notice from which relief is requested
  - may be DISMISSED as untimely, except as otherwise provided.
    - This two-month period IS NOT extendable.

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14 - Filing Dates of Patent Applications

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.53, Application number, filing date, and completion of application.;
37 CFR 1.10, Filing of Correspondence by "Express Mail.";
MPEP § 506, Completeness of Original Application [R-5];
MPEP § 506.02, Review of Refusal To Accord Filing Date [R-3];
MPEP § 513, Deposit as Express Mail with U.S. Postal Service [R-3];
MPEP § 601.01(d), Application Filed Without All Pages of Specification [R-7];
MPEP § 601.01(e), Nonprovisional Application Filed Without at Least One Claim [R-3];
MPEP § 601.01(f), Application Filed Without Drawings [R-7];
MPEP § 601.01(g), Applications Filed Without All Figures of Drawings [R-7].

Petitions Related to Filing Date Matters:

Decided by the OFFICE OR PETITIONS;
For Petitions Concerning General Application Filing Date Matters
- See:
  - 37 CFR 1.53(b);
  - MPEP § 506,I, II, and III;
  - MPEP § 506.02;
  - MPEP § 601.01(d)-(g);
  - Petition Fee Required under 37 CFR 1.17(f), Fee Code 1462/2462/3462;
    - If, however, it is believed that the necessity to file a petition resulted from error on the part of the Office, then such petition should be filed under 37 CFR 1.181, for which no petition fee is required.
For Petitions Concerning Application Filing Date Matters Arising under 37 CFR 1.10;
- See:
  - 37 CFR 1.10(c)-(i);
  - MPEP § 506.02;
  - MPEP § 513,V-XI;
  - Petition Fee Required under 37 CFR 1.17(f), Fee Code 1462/2462/3462;
    - If, however, it is believed that the necessity to file a petition resulted from error on the part of the Office, then such petition should be filed under 37 CFR 1.181, for which no petition fee is required.

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15 - Converting Patent Applications

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.53, Application number, filing date, and completion of application.;
MPEP § 201.04(b), Provisional Application [R-5];
MPEP § 506, Completeness of Original Application [R-5];
MPEP § 601.01(c), Conversion to or from a Provisional Application [R-7];

Converting NONPROVISIONAL application into a PROVISIONAL Application;

37 CFR 1.53(c)(2);
MPEP § 601.01(c),I;
Required Petition Fee under 37 CFR 1.17(q), Fee Code 1807;

Converting a PROVISIONAL application into a NONPROVISIONAL Application;

37 CFR 1.53(c)(3);
MPEP § 201.041(b);
MPEP § 601.01(c),II;
Provisional Application Form PTO/SB/16;
Required Petition Fee under 37 CFR 1.17(q),Fee Code 1807;
The Following Patent Application Filing Fees, if not Already Previously Paid, Will Also be Required:
- Basic Filing Fee;
- Search Fee;
- Examination Fee; and
- Other Patent Application Filing Fees, when Applicable.

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16 - Extensions of Time Under 37 CFR 1.136(b)

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.136, Extensions of Time.;
MPEP § 710.02, Shortened Statutory Period and Time Limit Actions Computed [R-3];
MPEP § 710.02(e), Extensions of Time [R-3].

Petitions Requesting Extensions of Time Under 37 CFR 1.136(b):

Decided in the OFFICE OF PETITIONS;
37 CFR 1.136(b);
Petition Fee Required under 37 CFR 1.17(g), Fee Code 1463/2463/3463.
NOTE: When the provisions of 37 CFR 1.136(a) are NOT available:
- Extensions of time under 37 CFR 1.136(b) for CAUSE may be possible;
- Any Petition/Request under 37 CFR 1.136(b) MUST also:
  - Be filed on or before the date the reply is due;
  - The mere filing of such a Petition/Request WILL NOT effect and extension.
Under no circumstances will ANY petition for any extension of time:
- operate to extend a time period beyond the 6-month statutory period.

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17 - Make Special - AGE and HEALTH

Manual of Patent Examining Procedure (MPEP) and Rules (37 CFR):

37 CFR 1.102, Advancement of examination.;
MPEP § 708.02, Petition To Make Special [R-6];
MPEP § 708.02(a), Accelerated Examination [R-5].

Petitions to Make Special - Applicant's Health

Decided by the OFFICE OF PETITIONS;
37 CFR 1.102(c)(1);
MPEP § 708.02,III;
No Petition Fee Required.

Petitions to Make Special - Applicant's Age

Decided by the OFFICE OF PETITIONS;
37 CFR 1.102(c)(1);
MPEP § 708.02,IV;
No Petition Fee Required.

ALL Other Petitions to Make Special Are:

Decided in the Technology Centers.

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18 - Expungement of Papers

Manual Of Patent Examining Procedure MPEP and Rule (37 CFR):

37 CFR 1.59, Expungement of information or copy of papers in an application file.;
MPEP § 724.05, Petition To Expunge Information or Copy of Papers in Application File [R-6];
MPEP § 724.06, Handling of Petitions To Expunge Information or Copy of Papers in Application File [R-6].
37 CFR 1.183, Suspension of rules.;
MPEP § 323.01(d), Expungement of Assignment Records [R-3].

Petitions to Expunge Information NOT submitted Pursuant to MPEP § 724.02 or As Part of an Information Disclosure Statement (IDS):

Decided by the OFFICE OF PETITIONS;
37 CFR 1.59(b);
- To Expunge Information Unintentionally Submitted in Application:
  - MPEP § 724.05, II;
  - Petition Fee Required under 37 CFR 1.17(g), Fee Code 1463/2463/3463;
- To Expunge Information Submitted In Incorrect Application:
  - MPEP § 724.05, III;
  - Petition Fee Required under 37 CFR 1.17(g), Fee Code 1463/2463/3463;
- To Expunge Information Forming Part of the Original Disclosure:
  - 37 CFR 1.183:
    - Requesting Waiver of the Requirements under 37 CFR 1.59(a);
    - MPEP § 724.05, IV;
    - Petition Fee Required under 37 CFR 1.17(f), Fee Code 1462/2462/3462;
- To Expunge Assignment Records:
  - Decided by the OFFICE OF PETITIONS;
  - MPEP § 323.01(d);
  - These types of Petitions are RARELY granted, UNLESS:
    - Petitioner can prove that:
      - The normal corrective procedures outlined in MPEP § 323.01(a) through MPEP § 323.01(c):
        
        WILL NOT provide adequate relief; and
        
        The integrity of the assignment records WILL NOT be affected by granting the petition.

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