ePetitions - Basics
- Can a registered practitioner acting in a representative capacity withdraw an application from issue for express abandonment under 37 CFR 1.313(c)(3)?
Only a party authorized under 37 CFR 1.33(b)(1), (b)(3), or (b)(4) may file an ePetition to withdraw an application from issue for express abandonment under 37 CFR 1.313(c)(3). While 37 CFR 1.138 does provide for a registered attorney or agent who acts in a representative capacity under the provisions of 37 CFR 1.34(a) when filing a continuing application to expressly abandon the prior application as of the filing date granted to the continuing application ePetition does not currently have this functionality built in.
- Does the Issue Fee Payment Transmittal (PTOL-85B) need to be attached when filing the Petition to Accept Late Payment of Issue Fee – Unintentional Late Payment (37 CFR 1.137(b)?
Yes. EFS Web will not proceed until the document has been attached.
- Why were these petitions selected for automatic processing rather then other petition types?
These petitions were selected due to high volume requests. The USPTO has determined these petitions could be automated and do not require reviews as complex as other petition types.
- Can a request to withdraw as an attorney of record and change of correspondence address be filed in a PCT international application?
Currently, such requests cannot be filed with ePetition.
- Can I use the ePetition option to request withdrawal of attorney or agent of record in a reexamination proceeding?
The ePetition option to request withdrawal of attorney or agent of record should not be used in a reexamination proceeding. The USPTO does not have the ability at this time to inform a third party that withdrawal of attorney or agent of record has been granted using the ePetition format. You may use form PTO/SB/83 to file the withdrawal request for a reexamination proceeding via EFS-Web as a follow-on submission to an existing application.
- Can I use the ePettion to Accept Unintentional Delayed Payment of the Maintenance Fee (37 CFR 1.378(c)) for renewing a petition that was previously dismissed?
No. A petition fee is required for reconsideration of a decision refusing to accept a maintenance fee under 37 CFR 1.378. The ePetition to Accept Unintentional Delayed Payment of the Maintenance Fee (37 CFR 1.378(c)) cannot accept the petition fee set forth in 37 CFR 1.17(f) as required under 37 CFR 1.378(e) for renewed petitions and should not be used at this time. All renewed petitions or requests for reconsideration should be filed with the Office of Petitions.
- For the Petition for Revival of an Application based on Failure to Notify the Office of Foreign or International Filing (37 CFR 1.137(f)), is the request to rescind of the Non-Publication Request automatic?
No. The request to rescind must be attached with the ePetition.
- Can I use the ePetitions as an unregistered efiler?
No. you must be a registered filer to file the new ePetitions. The ePetitions to Make Special based on Age, and Unintentional Late Payment of the Maintenance Fee can still be filed by an unregistered efiler.
- Can I use ePetition to withdraw a design application from issue? Can I use ePetition to withdraw a design application from issue?
No. A design application cannot be withdrawn from issue using ePetition at this time.
- Does EFS Web verify that the attorney filing the ePetition, Request for Withdrawal as Attorney of Agent of Record (37 CFR 1.36), has Power of Attorney?
Yes. EFS Web will verify the attorney’s registration number with the Power of Attorney of the application.
- For the Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(b)), does this petition apply to Provisional Applications?
No. Provisional Applications cannot be revived using ePetition.
- Can I save my ePetition submission?
Yes, ePetitions may be saved on EFS-Web for up to seven days. Saved submissions may be retrieved under My Workplace for EFS-Web registered eFilers.
- Can I use ePetition to revive a design application abandoned for late payment of the Issue Fee?
A design application cannot be revived for unintentional late payment of the Issue Fee using ePetition as the terminal disclaimer must be verified.
- Can the attorney who is filing the Request for Withdrawal as Attorney of Agent of Record (37 CFR 1.36), remove attorneys other then themselves?
Yes. The attorney may remove other practitioners but they are required to remove themselves as well.
- Why weren’t the two existing ePetitions converted to the Web-based ePetition format?
The USPTO would like to see how well the 10 web based ePetitions are received before converting.
- Can I still file the petitions that are now available in ePetition format by paper to the Office of Petitions?
Yes but the petition will not be autogranted.
- Can you use the ePetition to withdraw as agent or attorney of record for an issued or abandoned application?
No. The application must be pending. See Change in Procedure for Requests to Withdraw from Representation In a Patent Application, 1329 O.G. 99 (April 8, 2008).
- Can a registered practitioner acting in a representative capacity withdraw from representation using ePetition?
A registered practitioner acting in a representative capacity may not withdraw from representation using ePetition as there is no need for the practitioner to obtain the Office’s permission to withdraw from representation. See Change in Procedure for Requests to Withdraw from Representation In a Patent Application, 1329 O.G. 99 (April 8, 2008).
- For the Petition to Withdrawal from Issue after Payment of Issue Fee 37 CFR 1.313(c)(1) or (2), am I still able to attach an RCE or an amendment?
Yes. If the RCE or an amendment has not already been filed in the application, it can be attached with the ePetition.
- If I file a petition to withdrawl an application from issue prior to midnight on Monday, the day before the Patent issues, is the application converted back to a pending status?
It is converted back to a pending status if the petition is granted prior to midnight.
- Can an ePetition be filed in a PCT international application for purposes of establishing continuity with a later filed application under 35 USC 111(a)?
The online ePetition option for filing Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(b) may only be filed in an existing U.S. national application filed under 35 USC 111(a) or U.S. national stage under 35 USC 371.
- For which application types, can I use the ePetition option to request immediate withdrawal of attorney or agent of record?
The ePetition option to request immediate withdrawal of attorney or agent of record can only be used for a nonprovisional utility patent application (including reissue utility applications and national stage applications under 35 USC 371) and design application (including reissue design applications).
ePetitions - General
- What if my application is in the incorrect status, can I still file the ePetition?
EFS Web does have a set of requirements for the ePetition to be accepted and the status does need to meet these requirements for the ePetition to be granted.
- How long does it take to have the petitions granted?
If all items are correctly filed, ePetitions are automatically granted at the time they are filed through EFS Web.
- How do I provide comments and suggestions for improvements?
Please contact the Electronic Business Center (EBC) at 866-217-9197, 571-272-4100, or by e-mail at EBC@uspto.gov.
- Can I print and save the ePetitions form for my records?
Yes. There will be an opportunity to view and save the ePetition before submitting.
- Is there a contingency system if the ePetitons is unavailable?
Currently there is no contingent system if ePetition is unavailable. Customers are advised to use other methods of filing.
- Will a petition decision document be mailed once a petition is granted?
No. The decision will be uploaded into IFW and will not be mailed.