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1002    Petitions to the Director of the USPTO [R-08.2012]

37 C.F.R. 1.181   Petition to the Director.

  • (a) Petition may be taken to the Director:
    • (1) From any action or requirement of any examiner in the ex parteprosecution of an application, or in ex parteorinter partes prosecution of a reexamination proceeding which is not subject to appeal to the Board of Patent Appeals and Interferences or to the court;
    • (2) 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
    • (3) To invoke the supervisory authority of the Director in appropriate circumstances. For petitions in interferences, see § 1.644.
  • (b) Any such petition must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition; and where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition.
  • (c) When a petition is taken from an action or requirement of an examiner in the ex parte prosecution of an application, or in the ex parte or inter partes prosecution of a reexamination proceeding, it may be required that there have been a proper request for reconsideration (§ 1.111) and a repeated action by the examiner. The examiner may be directed by the Director to furnish a written statement, within a specified time, setting forth the reasons for his or her decision upon the matters averred in the petition, supplying a copy to the petitioner.
  • (d) Where a fee is required for a petition to the Director the appropriate section of this part will so indicate. If any required fee does not accompany the petition, the petition will be dismissed.
  • (e) Oral hearing will not be granted except when considered necessary by the Director.
  • (f) The mere filing of a petition 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 this part 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.
  • (g) The Director may delegate to appropriate Patent and Trademark Office officials the determination of petitions.

37 C.F.R. 1.182   Questions not specifically provided for.

All situations not specifically provided for in the regulations of this part will be decided in accordance with the merits of each situation by or under the authority of the Director, subject to such other requirements as may be imposed, and such decision will be communicated to the interested parties in writing. Any petition seeking a decision under this section must be accompanied by the petition fee set forth in § 1.17(h).

37 C.F.R. 1.183   Suspension of rules.

In an extraordinary situation, when justice requires, any requirement of the regulations in this part which is not a requirement of the statutes may be suspended or waived by the Director or the Director’s designee, sua sponte, or on petition of the interested party, subject to such other requirements as may be imposed. Any petition under this section must be accompanied by the petition fee set forth in § 1.17(h).

Petitions on appealable matters ordinarily are not entertained. See MPEP § 1201.

The mere filing of a petition will not stay the period for replying to an examiner’s action which may be running against an application, nor act as a stay of other proceedings (37 CFR 1.181(f)). For example, if a petition to vacate a final rejection as premature is filed within 2 months from the date of the final rejection, the period for reply to the final rejection is not extended even if the petition is not reached for decision within that period. However, if the petition is granted and the applicant has filed an otherwise full reply to the rejection within the period for reply, the case is not abandoned.

37 CFR 1.181(f) provides that any petition under that rule which is not filed “within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely.” Often, the “action or notice from which relief is requested,” for example, a requirement for a new drawing, is included in the same letter as an action on the merits of the claims, the latter having a 3-month period for reply. Under such circumstances, if applicant requests reconsideration, under 37 CFR 1.111(b), of the requirement for a new drawing, the examiner’s action on this request, if adverse, establishes the beginning of the 2-month period for filing the petition. The petition must be filed within this period even though the period for reply to the rejection of the claims may extend beyond the 2-month period. The 2-month period for filing timely petitions set forth in 37 CFR 1.181(f) applies to any petition under 37 CFR part 1, except as otherwise provided. A number of sections (e.g., 37 CFR 1.377, 37 CFR 1.378, 37 CFR 1.644, and 37 CFR 1.740) specify the time period within which a petition must be filed (or may be dismissed as untimely). The 2-month time period in 37 CFR 1.181(f) applies to a petition under any section (e.g., 37 CFR 1.182 and 37 CFR 1.183) that does not specify the time period within which a petition must be filed. The 2-month period is not extendible under 37 CFR 1.136(a) since the time is within the discretion of the Director of the USPTO.

Form paragraph 10.20 may be used where an insufficient fee was filed with a petition or a request.

¶ 10.20    Petition or Request Dismissed, Proper Fee Not Submitted

Applicant’s petition or request under 37 CFR [1] filed [2] is DISMISSED because the proper petition or processing fee of [3] required under 37 CFR 1.17 has not been submitted.

Examiner Note:

1002.01   Procedure [R-08.2012]

Petitions, together with the respective application files, are sent to the official having the delegated authority to decide the petition. The petition may be referred to the examiner for a formal statement under 37 CFR 1.181(c) or for an informal memorandum. See MPEP § 711.03(d).

Where a formal statement under 37 CFR 1.181(c) is made, a copy thereof is mailed to the petitioner by the examiner unless the examiner is otherwise directed, and the application file and petition, accompanied by the original copy of his or her statement, are returned to the official handling the petition. If an informal memorandum is requested, no copy thereof is mailed to the petitioner by the examiner.

After the decision has been rendered, the decision is entered on the “Contents” of the application file wrapper which is then returned to the primary examiner, who will act in accordance with the decision.

1002.02   Delegation of Authority To Decide Petitions [R-08.2012]

Petitions to the Director of the USPTO are decided in accordance with the following delegation of authority.

In any case in which the authority to decide the petition has been delegated as indicated in MPEP §§ 1002.02 (b), (f), (g), (j) and (o), a denial of a petition may be viewed as a final agency decision. A dismissal of a petition, a denial of a petition without prejudice, and other interlocutory orders are not final agency decisions.

In accordance with 37 CFR 1.181(g), the authority to decide petitions to the Director of the USPTO not otherwise delegated, has been delegated to various Office officials. Generally, these officials will decide petitions as specified in the following sections for the effective operation of the Office. Also listed are certain petitions which are not, strictly speaking, to the Director of the USPTO but have been committed by statute or rule to the designated officials.

The delegation of specific petitions and/or matters to the Technology Center (TC) Directors are identified in the sections below. Unless specifically provided for in the letter of delegation of authority, further delegations are not permitted. Any petitions and/or matters so delegated by the TC Directors may be decided by the TC Directors.

Authority not herein delegated has been reserved to the Director of the USPTO and may be delegated to appropriate officials on an ad hoc basis.

1002.02(a)   [Reserved]

1002.02(b)   Petitions and Requests Decided by the Office of the Deputy Commissioner for Patent Examination Policy

All petitions decided by the Office of the Deputy Commissioner for Patent Examination Policy other than by the PCT Legal Administration (see MPEP § 1002.02(p)), and inquiries relating thereto, should be directed to “Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450,” except as otherwise provided. For example, applications for patent term extension under 35 U.S.C. 156 should be directed to Mail Stop Patent Ext.

1. Petitions to revive an abandoned national, nonprovisional or provisional patent application, 37 CFR 1.137 (both unavoidable delay and unintentional delay), MPEP § 711.03(c).

2. Petitions under 37 CFR 1.183 for waiver or suspension of rules not otherwise provided for.

3. Petitions to invoke the supervisory authority of the Director of the USPTO under 37 CFR 1.181 in matters not otherwise provided for.

4. For utility and plant applications filed on or after November 29, 2000, petitions for an unintentionally delayed foreign priority claim, 37 CFR 1.55(c), MPEP § 201.14(a).

5. For utility and plant applications filed on or after November 29, 2000, petitions for an unintentionally delayed domestic priority claim, 37 CFR 1.78(a)(3) and (a)(6), MPEP § 201.11.

6. Petitions for deferment of issuance of patents, 37 CFR 1.314, MPEP § 1306.01.

7. Petitions for express abandonment of patent applications after payment of the issue fee, MPEP § 711.01 and MPEP § 1308.

8. Petitions relating to assignments and issuance of patents not otherwise provided for.

9. Petitions relating to public use proceedings, 37 CFR 1.292.

10. Petitions for the withdrawal of attorney under 37 CFR 1.36 in patent applications involved in proceedings before the Office of the Deputy Commissioner for Patent Examination Policy.

11. Petitions under 37 CFR 1.182 in matters not otherwise provided for.

12. Requests by the examiner to the Board of Patent Appeals and Interferences for reconsideration of a decision, MPEP § 1214.04.

13. Petitions to review refusal to accept and record maintenance fee payment filed prior to the expiration of a patent, 37 CFR 1.377, MPEP § 2580.

14. Petitions to accept delayed payment of maintenance fee in an expired patent, 37 CFR 1.378, MPEP § 2590.

15. Petitions to review a decision of Technology Center Director, 37 CFR 1.181.

16. Petitions to withdraw a holding of abandonment not otherwise delegated, 37 CFR 1.181.

17. Requests to order a Director initiated reexamination proceeding, 37 CFR 1.520.

18. Petitions to accept late papers in a reexamination proceeding based upon unavoidable or unintentional delay, 35 U.S.C. 133 and 35 U.S.C. 41(a)(7).

19. Petitions for access to patent applications under 37 CFR 1.14 with the exception of applications involved in or related to a proceeding before the Board of Patent Appeals and Interferences, MPEP § 103, § 104, and § 1901.05.

20. Petitions relating to reexamination proceedings and/or reissue proceedings under 37 CFR 1.182 and 1.183.

21. Petitions relating to merger of reexamination and reissue proceedings.

22. Petitions for acceptance of national applications without participation of one or more inventors under 37 CFR 1.47, MPEP § 409.03.

23. Petitions relating to patent term extension 37 CFR 1.710-1.785.

24. Petitions under 37 CFR 1.181 to review a determination of the length of the patent term extension under 37 CFR 1.701.

25. Requests for reconsideration of the patent term adjustment indicated in the notice of allowance or in the patent, under 37 CFR 1.705.

26. Requests for reinstatement of the period of patent term adjustment reduced pursuant to 37 CFR 1.704(b), under 37 CFR 1.705(c).

27. Petitions relating to the filing date of patent applications under 37 CFR 1.53 and former 37 CFR 1.60 and 1.62, MPEP § 506.02.

28. Petitions relating to filing and/or issuance of divisional reissue applications, 37 CFR 1.177, MPEP § 1451.

29. Petitions to convert a nonprovisional application filed under 37 CFR 1.53(b) to a provisional application under 37 CFR 1.53(c) where the nonprovi-sional application is before the Office of Petitions or the Office of Patent Legal Administration.

30. Requests to convert a provisional application filed under 37 CFR 1.53(c) to a nonprovisional application under 37 CFR 1.53(b) where the provisional application is before the Office of Petitions or the Office of Patent Legal Administration.

31. Petitions for extensions of time under 37 CFR 1.136(b) in applications before the Office of Petitions or the Office of Patent Legal Administration.

32. Petitions, or requests at the initiative of the USPTO by someone other than a Technology Center Director, to withdraw patent applications from issue after payment of the issue fee under 37 CFR 1.313(b) , MPEP § 1308.

33. Petitions to withdraw patent applications from issue after payment of the issue fee under 37 CFR 1.313(c).

34. Petitions to expunge papers from patent applications or patent files under 37 CFR 1.59 which were not submitted under MPEP § 724.02 or as part of the IDS.

1002.02(c)   Petitions and Requests Decided by the Technology Center Directors

1. Petitions or requests to reopen prosecution of patent applications or to reinstate a rejection after decision by the Board of Patent Appeals and Interferences under 37 CFR 1.198, where no court action has been filed, MPEP § 1214.04 and § 1214.07.

2. Petitions from a final decision of examiner requiring restriction in patent applications, 37 CFR 1.144, MPEP § 818.03(c), or holding lack of unity of invention in an international application, 37 CFR 1.477 and 1.489, MPEP § 1875.02.

3. Petitions invoking the supervisory authority of the Director of the USPTO under 37 CFR 1.181 involving any ex parte action or requirement in a patent application by the examiner which is not subject to appeal (37 CFR 1.191) and not otherwise provided for, as for example:

(a) prematureness of final rejection, MPEP § 706.07(c);

(b) holding of abandonment, MPEP § 711.03(c);

(c) requirement to cancel “new matter” from specification, MPEP § 608.04(c);

(d) relative to formal sufficiency and propriety of affidavits under 37 CFR 1.131 (MPEP § 715.08), 1.132 (MPEP § 716) and 1.608, MPEP § 2308 - § 2308.02;

(e) refusal to initiate an interference under 37 CFR 1.601(i), MPEP § 2306;

(f) refusal to enter an amendment under 37 CFR 1.312, MPEP § 714.16(d);

(g) refusal to enter an amendment, 37 CFR 1.127, MPEP § 714.19;

(h) refusal to enter an amendment under 37 CFR 1.111 or 37 CFR 1.115, MPEP § 714.03(a);

(i) resetting period for reply, MPEP § 710.06; and

(j) requirement for information under 37 CFR 1.105, MPEP § 704.11.

4. Petitions under 37 CFR 1.113 relating to objections or requirements made by the examiners.

5. Petitions for return of original oaths of patent applications, MPEP § 604.04(a).

6. Requests for extensions of a set shortened statutory period under 37 CFR 1.136(b) in applications pending in the Technology Center, MPEP § 710.02(e).

7. Petitions under 37 CFR 1.193(a) relating to the form of the appeal.

8. Petitions concerning appealed patent applications or ex parte reexamination proceedings before transfer of jurisdiction to the Board of Patent Appeals and Interferences (e.g., extension of time under 37 CFR 1.136(b) or 37 CFR 1.550(c) for filing an appeal brief), MPEP § 1206.

9. Request by applicant for a second or subsequent suspension of action in patent applications under 37 CFR 1.103, MPEP § 709.

10. Petitions from refusal to issue a Certificate of Correction for a patent not involved in an interference, 37 CFR 1.181, MPEP § 1480 - § 1485.

11. Petitions to reinstate appeals dismissed in the Technology Center.

12. Petitions from the denial of a request for reexamination, 37 CFR 1.515, MPEP § 2248.

13. Requests for extension of time in ex parte reexamination proceedings pending in the Technology Center, 37 CFR 1.550 (c).

14. Petitions under 37 CFR 1.129(b)(2) traversing a restriction requirement made in an application which is subject to the transitional restriction provisions, MPEP § 803.03.

15. Petitions to convert a nonprovisional application filed under 37 CFR 1.53(b) to a provisional application under 37 CFR 1.53(c) where the nonprovisional application is before the Technology Center.

16. Requests for interviews with examiner after a patent application has been sent to issue (Notice of Allowability mailed), MPEP § 713.10, or after transfer of jurisdiction to the Board of Patent Appeals and Interferences.

17. Petitions to expunge papers from patent applications or patent files under 37 CFR 1.59 which were submitted under MPEP § 724.02 or as part of an IDS.

18. Petitions, or requests at the initiative of the USPTO, to withdraw patent applications from issue before payment of the issue fee, 37 CFR 1.313(a).

19. Requests at the initiative of the USPTO to withdraw patent applications from issue after payment of the issue fee under 37 CFR 1.313(b), MPEP § 1308.

20. Petitions under 37 CFR 1.91 to admit a model or exhibit as part of the record of an application.

21. Requests for the return of models, exhibits, or specimen under 37 CFR 1.94.

22. Requests to withdraw as attorney or agent of record, 37 CFR 1.36 and MPEP § 402.06.

1002.02(c)(1)    Petitions Decided by the Director of Technology Center 3640 [R-08.2012]

In addition to the items delegated to all Technology Center Directors under MPEP § 1002.02(c), authority to decide the following is delegated to the Director of Technology Center 3640:

1. All petitions filed under 35 U.S.C. 267 to extend the time for taking action in United States-owned applications wherein the invention is important to the armament or defense of the United States.

2. All petitions under 37 CFR 1.103(f) to suspend action in United States-owned applications wherein the publication of the invention might be detrimental to the public safety or defense.

Any petitions filed under 35 U.S.C. 267 and/or 37 CFR 1.103(f) in any area of the Office must be forwarded to the Director of Technology Center 3640 for decision thereon.

3. Petitions under 37 CFR 5.12(a) for foreign license to file patent applications in foreign countries, MPEP § 140.

4. Petitions for rescission of secrecy order, 37 CFR 5.4, MPEP § 120.

5. Petitions to permit disclosure of subject matter under a secrecy order, 37 CFR 5.5(b), MPEP § 120.

6. Petitions for modification of secrecy order, 37 CFR 5.5(c), MPEP § 120.

7. Petitions for retroactive foreign filing license, 37 CFR 5.25, MPEP § 140.

8. Petitions relating to refusal of request for publication of a Statutory Invention Registration, 37 CFR 1.295, MPEP § 1105.

9. Petitions relating to request for withdrawal of request for publication of a Statutory Invention Registration, 37 CFR 1.296, MPEP § 1109.

10. Petitions relating to DOE property rights statements under 42 U.S.C. 2182.

11. Petitions relating to NASA property rights statements under 42 U.S.C. 2457.

12. Petitions relating to foreign filing licenses under 35 U.S.C. 184.

13. Petitions concerning review of security or government interest matters not otherwise provided for.

14. Petitions relating to any application under a secrecy order pursuant to 35 U.S.C. 181, including petitions to expunge subject matter from the application to overcome the secrecy order.

1002.02(c)(2)    Petitions Decided by the Director of Technology Center 1600 [R-08.2012]

In addition to the items delegated to all Technology Center Directors under MPEP § 1002.02(c), authority to decide the following is delegated to the Director of Technology Center 1600:

1. Petitions regarding sequence rules, 37 CFR 1.821-1.825.

2. Petitions to make biotechnology applications special where applicant is a small entity, MPEP § 708.02, item XII.

1002.02(c)(3)    Petitions Decided by the Director of Technology Center 2900 [R-08.2012]

In addition to the items delegated to all Technology Center Directors under MPEP § 1002.02(c), authority to decide the following petitions and requests filed in design applications is delegated to the Director of Technology Center 2900:

1. Petitions to revive an abandoned national application, 37 CFR 1.137 (both unavoidable delay and unintentional delay), MPEP § 711.03(c).

2. Petitions relating to the filing date of patent applications under 37 CFR 1.53 and former 37 CFR 1.60 and 1.62, MPEP § 506.02.

3. Requests for expedited examination of design applications under 37 CFR 1.155, MPEP § 1504.30.

1002.02(d)   Petitions and Matters Decided by Supervisory Patent Examiners

1. Entry of amendments under 37 CFR 1.312 which embody more than merely the correction of formal matters without changing the scope of any claim, MPEP § 714.16, § 714.16(d).

2. Approval of reopening prosecution after the filing of an appeal brief in order to incorporate any new ground of rejection, MPEP § 1208.01.

3. Requests for a Certificate of Correction submitted under 37 CFR 1.322 or 1.323 unless the error is clearly minor, clerical or typographical, in which case it is handled by the Certificate of Correction Branch.

4. Requests for a Certificate of Correction to correct a claim even if the request is submitted under 37 CFR 1.322.

5. Petitions under 37 CFR 1.324 to correct errors in joining inventors in a patent that is not involved in an interference, MPEP § 1481.

6. Disapproval of preliminary amendments under 37 CFR 1.115 or second (or subsequent) supplemental amendments (3rd reply) under 37 CFR 1.111, MPEP § 714.03(a).

7. Letters to an applicant suggesting claims for purposes of interference, or the submission of Form PTO-850, where one or more claims of one application would differ from corresponding claims of another application. See 37 CFR 1.603 and MPEP § 2303.

8. Amendments presented after decision in an appeal by the Board of Patent Appeals and Interferences as to which the primary examiner recommends entry as placing the application in condition for allowance. See MPEP § 1214.07.

9. Petitions under 37 CFR 1.84 to accept photographs or color drawings in patent applications.

10. Withdrawal from appeal of an application remanded by the Board of Patent Appeals and Interferences. See MPEP § 1211.

11. Requests for deferral of examination under 37 CFR 1.103(d), MPEP § 709.

1002.02(e)   Requests Decided by Primary Examiners

Requests under 37 CFR 1.48 for correction of inventorship in applications.

1002.02(f)   Petitions and Matters Decided by the Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences

The Chief Administrative Patent Judge is authorized to redelegate authority to decide any of these petitions or matters to the Vice Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences.

1. Designation of members of the Board of Patent Appeals and Interferences to hear appeals and decide interferences, both initially and on request for reconsideration. 35 U.S.C. 6.

2. Designation of members of the Board of Patent Appeals and Interferences to conduct proceedings in an interference. 37 CFR 1.610(a).

3. Designation of members of the Board of Patent Appeals and Interferences to decide requests for reconsideration. 37 CFR 1.640(c).

4. Requests related to superintending the functions of the Board of Patent Appeals and Interferences, including:

a. Petitions under 37 CFR 1.644 in interferences.

b. Petitions under 37 CFR 1.181, 1.182, and 1.183 from actions of the Board of Patent Appeals and Interferences or of personnel at the Board of Patent Appeals and Interferences.

c. Petitions from a decision under 37 CFR 1.612(a) granting or denying access by a party to an interference to pending and abandoned patent applications. MPEP § 103.

d. Petitions for an extension of time for seeking rehearing in an ex parte case before the Board of Patent Appeals and Interferences.

e. Petitions from a decision under 37 CFR 1.615(b) authorizing or declining to authorize continued concurrent prosecution of an application involved in an interference proceeding.

f. Petitions from a decision under 37 CFR 1.613(d) declining to authorize a withdrawal of an attorney or agent from representing a party involved in an interference.

g. Petitions from a decision granting or denying a request for a certificate of correction under 37 CFR 1.322 and 1.323 for a patent involved in an interference.

h. Petitions seeking disqualification of an attorney or agent under 37 CFR 10.130(b) in an inter partes case pending before the Board of Patent Appeals and Interferences.

5. Petitions under 35 U.S.C. 135(c):

a. Petitions under 35 U.S.C. 135(c) and 37 CFR 1.666(c) to permit the filing of an agreement or understanding during the 6-month period subsequent to termination of an interference.

b. Petitions under 37 CFR 1.666(b) for access to copies of an interference agreement or understanding filed under 35 U.S.C. 135(c).

1002.02(g)   Petitions Decided by the Administrative Patent Judges

1. Petitions for access to unopened preliminary statements under 37 CFR 1.631.

2. Petitions under 37 CFR 1.615 for concurrent ex parte and inter partes prosecution of patent applications, MPEP § 2315.

3. Petitions for the withdrawal of attorney under 37 CFR 1.36 in patent applications involved in interference proceedings under 37 CFR 1.601 - 1.687 before the Board of Patent Appeals and Interferences, 37 CFR 1.613(d).

4. A request for a Certificate of Correction for a patent that is involved in an interference conducted under 37 CFR 1.601 - 1.687 presented via a motion under 37 CFR 1.635.

5. Motions to correct errors in joining inventors in proceedings under 37 CFR 1.601 - 1.687, 37 CFR 1.634.

See also MPEP § 1002.02(j).

1002.02(h)   [Reserved]

1002.02(i)   Petitions Decided by the Commissioner for Trademarks

Petitions relating to Trademarks are covered in Chapter 1700 of the Trademark Manual of Examining Procedure.

1002.02(j)   Petitions Decided by the Board of Patent Appeals and Interferences

Requests under 37 CFR 1.197(b) for a rehearing of a decision of the Board of Patent Appeals and Interferences. MPEP § 1214.03.

1002.02(k)   [Reserved]

1002.02(k)(1)   Petitions and Matters Decided by the General Counsel [R-08.2012]

1. Requests for confidentiality waiver under 35 U.S.C. 122.

2. Petitions (under 37 CFR 1.304(a)(3) or 37 CFR 2.145(d)) seeking to extend the time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action seeking judicial review of a decision of the Board of Patent Appeals and Interferences or the Trademark Trial and Appeal Board.

3. Petitions under 37 CFR 10.2(c) from a final decision of the Director of Enrollment and Discipline.

4. Appeals under 37 CFR 10.155 of initial decisions of administrative law judges and requests for reconsideration under 37 CFR 10.156 in proceedings under 35 U.S.C. 32 in which the Director of Enrollment and Discipline seeks to exclude or suspend a practitioner from practice before the Patent and Trademark Office.

1002.02(k)(2)    Requests Decided by the Office of General Law [R-08.2012]

1. Requests filed under the Freedom of Information Act.

2. Petitions requesting review of the FOIA Officer’s decision.

1002.02(k)(3)    Petitions Decided by the Solicitor [R-08.2012]

1. Petitions for extension of time in court matters 35 U.S.C. 142, 145, and 146.

2. Petitions relating to ex parte questions in cases before the Court of Appeals for the Federal Circuit.

The Office of the Solicitor is available to render legal advice to any deciding official in connection with any petition.

1002.02(l)   Requests Decided by the Certificates of Correction Branch

1. Requests for Certificates of Correction under 37 CFR 1.322 or 37 CFR 1.323 except for denials on grounds requiring consideration by the Chief Administrative Patent Judge or the supervisory patent examiners otherwise provided for, MPEP § 1480 - § 1485.

2. Petitions to issue corrected patent, 37 CFR 1.322(b).

3. Request to change inventorship pursuant to court order, 37 CFR 1.324, MPEP § 1481.

1002.02(m)    Petitions Decided by the Director of Enrollment and Discipline

1. Petitions relating to registration.

2. Requests for limited recognition under 37 CFR 10.9.

3. Petitions for exceptions to undertakings under 37 CFR 10.10(b)(2), MPEP § 1702.

4. Petitions for regrading of registration examinations under 37 CFR 10.7(c).

5. Petitions for reinstatement under 37 CFR 10.160.

6. Petitions to suspend the rules under 37 CFR 10.170.

1002.02(n)   [Reserved]

1002.02(o)   Petitions and Other Matters Decided by the Deputy Director of the USPTO

The authority to take the following actions has been delegated to the Deputy Director of the USPTO.

1. Decide petitions to the Director of the USPTO in patent interference proceedings under 37 CFR 1.644.

2. Decide petitions to the Director of the USPTO from actions taken by the Board of Patent Appeals and Interferences.

If there is a vacancy in the position of Deputy Director of the USPTO, decisions on petitions in patent interference cases will be signed by the Director of the USPTO.

Upon receipt of a petition and without waiting for any opposition, the entire interference file is to be forwarded to the Office of the Solicitor. The Solicitor is directed to promptly cause a review to be made of the petition and to prepare a draft decision for the Deputy Director or Director of the USPTO as may be appropriate. The Solicitor is authorized to take any interlocutory action, i.e., extending times for filing oppositions and seeking judicial review, obtaining agreement on facts from the parties, etc., as may be necessary to promptly dispose of the petition.

1002.02(p)   Petitions and Matters Decided by the PCT Legal Administrator

1. Petitions to withdraw the Notice of Acceptance and/or filing receipt and indication of the steps necessary for completion of the national stage in a national application requesting treatment under 35 U.S.C. 371.

2. Petitions for withdrawal of attorney or agent of record in proceedings before PCT Operations and/or the Office of the PCT Legal Administrator, 37 CFR 1.36, MPEP § 402.06.

3. Petitions for access to an international application or a national application (i.e., a national stage application or a national application which is continuing from an international application) pending in PCT Operations and/or the Office of the PCT Legal Administrator.

4. Requests under 37 CFR 1.26 or 1.446 for refund of fees paid in an international application or in a national application (i.e., a national stage application or a national application which is continuing from an international application) before PCT Operations and/or the Office of the PCT Legal Administrator.

5. Petitions under 37 CFR 1.182 to convert a national application which was filed under 35 U.S.C. 371 to an application filed under 35 U.S.C. 111(a) or to convert a national application which was filed under 35 U.S.C. 111(a) to an application filed under 35 U.S.C. 371.

6. Petitions under 37 CFR 1.181 to withdraw the holding of abandonment where the holding was made in PCT Operations or in the PCT Legal Office.

7. Petitions under 37 CFR 1.181 to invoke the supervisory authority of the Director of the USPTO in circumstances arising in PCT Operations and/or the Office of the PCT Legal Administrator other than the circumstances set forth in paragraph 6, above.

8. Petitions under 37 CFR 1.137 (both unavoidable delay and unintentional delay) to revive an application filed under the Patent Cooperation Treaty (PCT).

9. Petitions under 37 CFR 1.425 to accept the signature in an international application on behalf of an applicant.

10. Petitions under 37 CFR 1.47 or a submission under 37 CFR 1.42 to accept the signature in a national stage application on behalf of an applicant.

11. Requests under 37 CFR 1.48 or a submission under 37 CFR 1.28 (change of inventorship and small entity status, respectively) in a national stage application prior to entry into the national stage.

12. Petitions under 37 CFR 1.182 or 1.183 filed in an international application relating to filing date matters, drawing problems, priority claim issues, Express Mail problems, Chapter II Demand problems, issues relating to obvious error and issues relating to withdrawal.

13. Petitions under 37 CFR 1.182 or 1.183 dealing with circumstances other than those set forth in paragraph 12, but relating to issues under the PCT.

14. Decisions withdrawing an examiner’s office action in an application where the application is not in compliance with the PCT provisions of the Treaty, U.S. Law or the Regulations.

15. Petitions dealing with PCT related issues in an application filed under 35 U.S.C. 111(a) (such as applications where there is a potential claim for benefit under 35 U.S.C. 365).

16. Petitions to convert a nonprovisional application filed under 37 CFR 1.53(b) to a provisional application under 37 CFR 1.53(c) where the nonprovisional application is before PCT Operations and/or the Office of the PCT Legal Administrator.

17. Petitions relating to international applications filed under the Patent Cooperation Treaty not otherwise provided for.

1002.02(q)   Petitions and Requests Decided by the Director of Office of Initial Patent Examination

1. Requests under 37 CFR 1.48(d) to add the name of an inventor in a provisional application.

2. Requests under 37 CFR 1.48(e) to delete the name of the person erroneously named as an inventor in a provisional application.

3. Petitions to convert a nonprovisional application filed under 37 CFR 1.53(b) to a provisional application under 37 CFR 1.53(c) where the nonprovisional application is before the Office of Initial Patent Examination or where the nonprovisional application is before the Office of Publications.

4. Requests to convert a provisional application filed under 37 CFR 1.53(c) to a nonprovisional application under 37 CFR 1.53(b) where the provisional application is before the Office of Initial Patent Examination.

5. Petitions under 37 CFR 1.182 to accept omitted page(s) or drawing(s) and be accorded a filing date as of the date of such submission, or to accept drawings for purposes of a patent application publication.

6. Petitions to withdraw holding of abandonment where notices of abandonment were mailed by the Office of Initial Patent Examination.

7. Petitions for extension of time under 37 CFR 1.136(b) in applications before the Office of Initial Patent Examination.

1002.02(r)   Petitions Decided by the Director of Office of Patent Publication

1. Petitions to withdraw holding of abandonment where a notice of abandonment has been, or could be mailed by the Office of Patent Publication.

2. Petitions for express abandonment to avoid publication of the application (should be directed to Mail Stop Express Abandonment), 37 CFR 1.138(c), MPEP § 711.01.

3. Requests to issue patent in name of the assignee after payment of the issue fee, 37 CFR 3.81(b), MPEP § 307.

4. Petitions to withdraw the holding that a patent has lapsed for failure to pay the balance of the issue fee, 37 CFR 1.317.

1002.02(s)   Petitions and Matters Decided by the Special Program Examiners in the Technology Centers

1. Petitions to make patent applications special under 37 CFR 1.102, MPEP § 708.02:

(a) on the ground of applicant's age or state of health, MPEP § 708.02, item III & IV;

(b) a continuation-in-part of an earlier application;

(c) under the Environmental Quality Program, MPEP § 708.02, item V;

(d) under the Energy Program, MPEP § 708.02, item VI;

(e) because the application invokes safety of research in the field of Recombinant DNA, MPEP § 708.02, item VII;

(f) under the Special Examining Procedure for certain new applications - accelerated examination, MPEP § 708.02, item VIII;

(g) superconductivity, MPEP § 708.02, item IX;

(h) inventions relating to HIV/AIDS and cancer, MPEP § 708.02, item X;

(i) relating to inventions for countering terrorism, MPEP § 708.02, item XI;

(j) on the ground of prospective manufacture, MPEP § 708.02, item I;

(k) on the ground of infringement, MPEP § 708.02, item II; and

(l) for reasons not otherwise provided for.

2. Petitions for withdrawal of attorney from application pending in the Technology Centers, 37 CFR 1.36.

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Last Modified: 03/27/2014 10:10:32