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Guidance on Petitions Under CFR Rule 41.3 to the PTAB

1.  What is the scope of petitions decided by the PTAB? 

a)  Under 37 C.F.R. § 41.3, the Board may address petitions on matters pending before the Board (37 C.F.R. §§ 41.35, 41.64, 41.103, and 41.205); otherwise, see §§ 1.181 to 1.183. 

  • Typically, a petition filed under 37 C.F.R. § 41.3 must be filed within 14 days from the date of the action from which the party is requesting relief, and any request for reconsideration of a petition decision must be filed within 14 days of the decision on petition, or such other time as the Board may set, pursuant to 37 C.F.R. § 41.3(e).
  • A party may not file an opposition or a reply to a petition without Board authorization, pursuant to 37 C.F.R. § 41.3(e)(2).
  • The fee set forth in 37 C.F.R. § 41.20(a) must accompany a petition under 37 C.F.R. § 41.3, except no fee is required for a petition seeking supervisory review.  See 37 C.F.R. § 41.3(c).

b)  The Federal Register Notices of March 30, 2010, May 25, 2010, and August 17, 2010 state that in all appeals before the Board, the Chief Administrative Patent Judge will have the sole responsibility for determining whether briefs and corrected briefs comply with the applicable rules, and will address any inquiries and petitions regarding notices of noncompliant briefs.  See Streamlined Procedure for Appeal Brief Review, 75 Fed. Reg. 15689 (Mar. 30, 2010), Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings, 75 Fed. Reg. 29321 (May 25, 2010), and Streamlined Procedure for Appeal Brief Review in Inter Partes Reexamination Proceedings, 75 Feg. Reg. 50750 (Aug. 17, 2010).

  • Petitions seeking supervisory review of a determination of non-compliant brief should be filed pursuant to 37 C.F.R. § 41.3.  No fee is required for such petition seeking supervisory review.  See 37 C.F.R. § 41.3(c). 
  • Petitions seeking suspension of the rules should be filed under 37 C.F.R. § 1.183 with the appropriate fee. 
  • Petitions seeking to strike another party’s brief should be filed under 37 C.F.R. § 1.181 with the appropriate fee.

c)  In the case of a petition for extension of time filed in a reexamination proceeding:

  • The time for taking any action in a reexamination proceeding will not be extended in the absence of sufficient cause or for more than a reasonable time.
  • Any request for such extension must be filed on or before the day on which action is due, and the mere filing of the request with not effect the extension.
  • Any request for such extension must be accompanied by the petition fee set forth in
    § 1.17(g).

2.  How can I file a petition? 

    A petition must be in writing and addressed to the Chief Administrative Patent Judge.  See 37 C.F.R. § 41.3(a). 

3.  When can I file a petition? 

    Typically, a petition must be filed promptly from the date of action from which the party is requesting relief.  See, e.g., 37 C.F.R. §§ 41.3(e) and 1.956.

4.  Can I oppose a petition? 

Generally, no.  A party may not file an opposition or a reply to a petition without Board authorization.  See 37 C.F.R. § 41.3(e)(2).

5.  Are there any special considerations to address when filing a petition under 37 C.F.R. § 1.183?

Petitions pursuant to § 1.183 for suspension or waiver of any requirement of the regulations, which is not a requirement of the statutes, require a showing of an extraordinary situation, when justice requires suspension or waiver of the requirement.

6.  Does the filing of a petition stay the time for other action in a Board proceeding?

No.  See 37 C.F.R. § 41.3(d).

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Last Modified: 5/30/2014 12:03:08 PM