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Office of Petitions

The Office of Petitions, under the authority of the Associate Commissioner of Patent Examination Policy (ACPEP), reviews and decides petitions, requests, and related inquiries, regarding the filing of patent applications, revival of abandoned applications, reinstatement of expired patents, withdrawal of patent applications from issue, small entity entitlement, review of previous decisions of the Technology Centers, suspension of regulations, and questions not specifically provided for by regulations.

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.

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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:

 

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03 - Withdrawal from Issue

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

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:

For Additional Information, Please see:

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

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

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04 - EXPRESS Abandonment

Petitions and Letters of EXPRESS Abandonment:

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:
    • To Obtain Refund of Search Fee and Excess Claims Fee:

 For Additional Information, Please see:

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;

 

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05 - Abandonment - Withdrawal or Revival

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

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: Selected Types of these petitions can also be filed as epetitions.
      • 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:

For Additional Information, Please see:

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.

 

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06 - Waiver or Suspension of Rules

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

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.

For Additional Information, Please see:

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].

 

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07 - Invoking Supervisory Authority of the Director of the USPTO

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

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.

For Additional Information, Please see:

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].

 

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08 - Unintentionally Delayed Priority Claims

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

Unintentionally Delayed Foreign Priority Claims:

Unintentionally Delayed Domestic Benefit Claims:

For Additional Information, Please see:

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].

 

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09 - Deferment of Issuance of Patents

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

Petitions Requesting Deferment of Issuance of a Patent:

  • AFTER payment of the Issue Fee:
  • BEFORE payment of the Issue Fee:
    • NOT available.

For Additional Information, Please see:

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].

 

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10 - Attorney or Agent Withdrawals

Petitions and Requests for Withdrawal as Attorney or Agent:

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

For Additional Information, Please see:

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.

 

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

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

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.

For Additional Information, Please see:

Rules (37 CFR):

  • 37 CFR 1.182, Questions not specifically provided for.

 

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12 - Acceptance of Maintenance Fee Payments

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:

For Additional Information, Please see:

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]

 

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13 - General Supervisory Review by the Director

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

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.

 For Additional Information, Please see:

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].

 

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14 - Filing Dates of Patent Applications

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

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.

 For Additional Information, Please see:

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]. 

 

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15 - Converting Patent Applications

These requests are handled by the Office of Petitions ONLY when the application is before the Office of Petitions.

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

Converting NONPROVISIONAL application into a PROVISIONAL Application;

Converting a PROVISIONAL application into a NONPROVISIONAL Application;

  • 37 CFR 1.53(c)(3);
  • MPEP § 201.04(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.

For Additional Information, Please see:

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];

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

These requests are handled by the Office of Petitions ONLY when the application is before the Office of Petitions.

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

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.

For Additional Information, Please see:

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].

 

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17 - Make Special - AGE and HEALTH

Petitions to Make Special - Applicant's Health

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

  • 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

This petition can also be filed as a PDF-based ePetition.

If it is not being filed as an ePetition, Submit a signed request that includes information listed in Requirements of a Petition.

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.

For Additional Information, Please see:

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].

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18 - Expungement of Papers

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

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

  • Decided by the OFFICE OF PETITIONS;
  • 37 CFR 1.59(b);
    • To Expunge Information Unintentionally Submitted in Application:
    • To Expunge Information Submitted In Incorrect Application:
    • To Expunge Information Forming Part of the Original Disclosure:
    • 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.

For Additional Information, Please see:

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].

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19 - Prioritized Examination (TRACK ONE)

Please see Here

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20 - Patent Prosecution Highway (PPH)

Please see Here.

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21 - Petition for Retroactive Foreign Filing License

No Form Available; Submit a signed request that includes information listed in Requirements of a Petition.

  • Decided by the OFFICE OF PETITIONS
  • A retroactive license may be sought if an unlicensed foreign filing has occurred through error and without deceptive intent. However, the requirements of 37 CFR 5.25 must be fulfilled in order for such a petition to be granted. Note that licenses under 37 CFR 5.25 are only made retroactive with respect to specific acts of foreign filing, and therefore the countries, the actual dates of filing and the establishing of the nature of the error must be provided for each act of proscribed foreign filing for which a retroactive license is sought. Also, the required verified statement must be in oath or declaration form.
  • A petition for a Retroactive foreign filing license based on a pending patent application (37 CFR 5.14) or for material not related to any pending application (37 CFR 5.13), may be mailed, faxed, hand-delivered or filed thru EFS-Web (provided an application is on file).
    Facsimiles must be sent to:  571 273-0185

Hand delivery:    Room 4B31, 501 Dulany Street (Knox Building), Alexandria Virginia 22314.

Regular mail:     Mail Stop: L&R
                            Commissioner for Patents
                            P.O. Box 1450
                            Alexandria, VA 22313-1450

All licenses will be mailed to the appropriate correspondence address, however, a courtesy copy may be provided by facsimile if such notification is requested.

For Additional Information, Please see:

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

  • 37 CFR 5.11 - License for filing in a foreign country an application on an invention made in the United States or for transmitting international application;
  • 37 CFR 5.12 - Petition for license;
  • 37 CFR 5.13 - Petition for license; no corresponding application;
  • 37 CFR 5.14 - Petition for license; corresponding U.S. application;
  • 37 CFR 5.15 - Scope of License
  • MPEP § 140 - Foreign Filing Licenses

 

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22 - Petitions for Correction of Patent Application Publications under 37 CFR 1.221(b)

No form available.  Submit a signed request that includes information listed in Requirements of a Petition within two (2) months of the date of the patent application publication that identifies the Office’s material mistake.  The two month period is not extendable.

A material mistake is an error that affects the public’s ability to appreciate the technical disclosure of the patent application publication, to determine the scope of the patent application publication, or to determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent.  Examples of a material mistake usually include:

  • an error in the published claims,
  • an omission in the published specification or drawings, and
  • an omission in the benefit claim.

Examples of a non-material mistake, for which the request will not be granted, include:

  • an error in the assignment information, the inventor information, or the title and
  • typographical errors in the publication that do not affect the interpretation of the published claims

If the two month period has expired or the mistake is caused by the applicants, applicants may correct the mistakes by filing a request for republication under 37 CFR 1.221 (a), and should not file a request for corrected publication under 37 CFR 1.221 (b).  Requests for republication under 37 CFR 1.221 (a) are filed entirely online without review by a human and must be submitted via the EFS System as a “Pre-Grant Publication”.  Guidance for filing a request under 37 CFR 1.221(a) can be found here.

For Additional Information, Please see:

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

  • 37 CFR 1.221(b), Voluntary publication or republication of patent application publication;
  • MPEP § 1130, Republication and Correction of Patent Application Publications [R-5]

 

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Last Modified: 9/28/2013 10:54:49 AM