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1002 Petitions to the Director of the USPTO [R-07.2022]

37 CFR 1.4 Nature of correspondence and signature requirements.

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  • (c) Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects. Subjects provided for on a single Office or World Intellectual Property Organization form may be contained in a single paper.

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37 CFR 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 Patent Trial and Appeal Board 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 involving action of the Patent Trial and Appeal Board, see § 41.3 of this title.
  • (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 CFR 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(f).

37 CFR 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(f).

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

A petition should include:

  • 1. A statement of the type of relief requested and the authorizing provision of statute or rules, if applicable;
  • 2. A statement of the relevant facts;
  • 3. An identification of the points that are to be reviewed; and
  • 4. The fee, where required.

37 CFR 1.4(c) requires a separate petition for each distinct subject, inquiry or order to avoid confusion and delay in answering the petition. Therefore, each petition should ordinarily only be filed under a single authorizing provision (e.g., 37 CFR 1.181). Although concurrent petitions seeking relief from the same action may be filed, many prior petitioners have benefitted by delaying the filing of petitions under 37 CFR 1.182 or 1.183 until after they receive a decision on a petition seeking supervisory review under 37 CFR 1.181.

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, 1.378, and 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.

37 CFR 1.181(f) authorizes deciding officials to reasonably exercise discretion to accept a petition filed more than 2 months after the date of the action or notice from which relief is requested. A deciding official should not accept a petition after the 2-month period without a reason because the 2-month period provides for minimal undue delay in patent prosecution (“The Office has long considered the two-month period in § 1.181(f) to be the benchmark for determining the timeliness of petitions.” Changes to Implement the Patent Business Goals, 65 FR 54603, 54646 (September 8, 2000) (citing Changes to Patent Practice and Procedure, 62 FR 53132, 53161 (October 10, 1997))). The deciding official may exercise their discretion to accept an untimely petition beyond the 2-month period in the circumstance that doing so would avoid unnecessary delays in the prosecution of the application. When a petition subject to 37 CFR 1.181(f) is filed after the 2-month period from the mailing date of the action or notice from which relief is requested and is accepted at the discretion of the deciding official, the reason for accepting the untimely petition should be articulated in the decision to ensure clarity of the record. The following non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period:

  • (1) Petitioner engaged in significant, constructive efforts with the examiner to resolve the issue outside of the petitions process
  • (2) The examiner agreed, on the written record, to perform an action that would resolve the issue, but failed to do so
  • (3) A showing of extenuating circumstances, such as delay caused by health, pandemic, natural disaster, etc.

If the deciding official determines that the petition will be dismissed as untimely, the decision should include an explanation of how the 2-month period was calculated. The decision should inform petitioner that arguments on the issue of timeliness may be presented in a renewed petition.

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)).

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:

Form paragraph 10.30 may be used to generate the header information for a petition decision.

¶ 10.30 Petition Header Information

In re Application of: [1] : Appl. No.: [2] : DECISION ON PETITION Filed: [3] : [5] For: [4] :

1002.01 Procedure [R-07.2015]

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.

1002.02 Delegation of Authority To Decide Petitions [R-07.2022]

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), 1002.02(f), 1002.02(g), 1002.02(j), 1002.02(o), and 1002.02(p), a denial of a petition is 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.

Petitions decided by the Technology Center Directors are set forth in MPEP § 1002.02(c) et seq. A petition decided under the delegated authority set forth in MPEP § 1002.02(c) should not use language that suggests that it is a final agency decision. Therefore, a petition decided by a Technology Center Director in which the requested relief is not granted should be dismissed rather than denied. Additionally, the decision should indicate that it is not a final agency decision. To promote consistency and enhance clarity of petition decisions by Technology Center Directors, the following language may be used when a petition decided by a Technology Center Director is dismissed:

“The petition filed [date X] is dismissed. This is not a final agency decision. See MPEP § 1002.02. Any request for reconsideration or higher level review of this decision not filed within two months of the mailing date of this decision may be dismissed as untimely. This two-month period is not extendable. See 37 CFR 1.181(f).”

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 is 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 Deputy Commissioner Who Oversees the Office of Petitions or Assigned Staff in the Office of Petitions, the Office of Patent Legal Administration and the MPEP Staff Office [R-07.2022]

In general petitions under this section 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 Hatch-Waxman PTE and petitions for retroactive foreign filing license under 37 CFR 5.25 should be directed to Mail Stop L&R.

1. Petitions to revive an abandoned national, nonprovisional or provisional patent application on the basis of unintentional delay, 37 CFR 1.137 and 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(e) and MPEP § 214.02.

5. Petitions to restore the right of priority under 37 CFR 1.55(c).

6. Petitions for late filing of priority papers under 37 CFR 1.55(f).

7. For utility and plant applications filed on or after November 29, 2000, petitions for an unintentionally delayed domestic benefit claim, 37 CFR 1.78(c) and (e) and MPEP § 211.04.

8. Petitions to restore a domestic benefit claim under 37 CFR 1.78(b) or (e).

9. Petitions to defer issuance of patents, 37 CFR 1.314 and MPEP § 1306.01.

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

11. Petitions relating to issuance of patents not otherwise provided for, for example, issuance of a patent in the name of an assignee under 37 CFR 3.81.

12. Petitions for the withdrawal of attorney or agent of record under 37 CFR 1.36 in patent applications involved in proceedings before Deputy Commissioner for Patents who oversees the Office of Petitions or assigned staff in the Office of Petitions, the Office of Patent Legal Administration or the MPEP staff office and in applications pending in a Technology Center.

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

14. Requests from the examiner for the rehearing of a decision of the Patent Trial and Appeal Board, MPEP § 1214.04.

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

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

17. Petitions to review a decision of Technology Center Director or Central Reexamination Unit Director, 37 CFR 1.181.

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

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

20. Petitions to accept late papers in a reexamination proceeding based upon unintentional delay, 35 U.S.C. 41(a)(7).

21. Petitions for access to patent applications under 37 CFR 1.14 (or pre-AIA 37 CFR 1.14) with the exception of applications involved in or related to a proceeding before the Patent Trial and Appeal Board, MPEP §§ 103, 104, and  1901.05.

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

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

24. Applications relating to Hatch-Waxman patent term extension, 37 CFR 1.710 - 1.791 and petitions relating to Hatch-Waxman patent term extension, 37 CFR 1.182 or 1.183.

25. Petitions under 37 CFR 1.181 to review a determination of the length of the patent term extension under 37 CFR 1.701 for original applications, other than designs, filed on or after June 8, 1995 and before May 29, 2000, MPEP § 2720.

26. Requests for reconsideration of the patent term adjustment indicated in the notice of allowance or in the patent, under 37 CFR 1.705, MPEP § 2734, subsection I.

27. Requests for reinstatement of the period of patent term adjustment reduced pursuant to 37 CFR 1.704(b) under 37 CFR 1.705(c), MPEP § 2734, subsection II.

28. Petitions relating to the filing date of patent applications under 37 CFR 1.53, MPEP § 506.02.

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 nonprovisional 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 under 37 CFR 1.313(a) before payment of the issue fee.

33. 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, subsection II.

34. Petitions to withdraw patent applications from issue after payment of the issue fee under 37 CFR 1.313(c), MPEP § 1308, subsection I.B.

35. Petitions to expunge papers or assignment information from patent applications or patent files under 37 CFR 1.59 which were not submitted under MPEP § 724.02 or as part of an information disclosure statement (IDS).

36. Petitions to expunge recorded assignment information, 37 CFR 1.182 and MPEP § 323.01(d).

37. Petitions to Make Special based on inventor’s health, 37 CFR 1.102(c)(1) and MPEP § 708.02, subsection I.

38. Petitions to Make Special based on inventor’s age, 37 CFR 1.102(c)(1) and MPEP § 708.02, subsection II.

39. Requests for prioritized examination under 37 CFR 1.102(e), MPEP § 708.02(b).

40. Requests for participation in a Patent Prosecution Highway program (www.uspto.gov/ patents/init_events/pph/index.jsp).

41. Requests for participation in the Law School Pilot Program.

42. Petitions for retroactive foreign filing license under 37 CFR 5.25, MPEP § 140, subsection II.

43. Petitions to show proprietary interest sufficient to make application on behalf of and as agent for the inventor under 37 CFR 1.46 (applicable in applications filed on or after September 16, 2012), MPEP § 409.05, subsection II.

44. Petitions to accept an oath or declaration without a joint inventor’s signature, pre-AIA 37 CFR 1.47(a) (applicable in applications filed before September 16, 2012), MPEP § 409.03(a).

45. Petitions to accept an oath or declaration from a person to whom an inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, pre-AIA 37 CFR 1.47(b) (applicable in applications filed before September 16, 2012 where none of the inventors are available to sign), MPEP § 409.03(b).

46. Requests for Corrected Patent Application Publication under 37 CFR 1.221(b), MPEP § 1130, subsection II.

47. Petitions to change entity status, including the payment of additional fees, 37 CFR 1.28.

48. Return of papers containing discourteous remarks. See MPEP §§ 714.19 and 714.25.

1002.02(c) Petitions and Requests Decided by the Technology Center Directors [R-07.2022]

1. Petitions or requests to reopen prosecution of patent applications or to reinstate a rejection after decision by the Patent Trial and Appeal Board 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 under 37 CFR 1.144 and MPEP § 818.01(c), or protests following a holding of lack of unity of invention by the USPTO in its capacity as International Searching Authority (37 CFR 1.477 and MPEP § 1850) or International Preliminary Examining Authority (37 CFR 1.489 and 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:

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

5. 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).

6. Petitions under 37 CFR 41.40 to request review of the primary examiner’s failure to designate a rejection in the examiner’s answer as a new ground of rejection, MPEP § 1207.03(b).

7. Petitions concerning appealed patent applications or ex parte reexamination proceedings before transfer of jurisdiction to the Patent Trial and Appeal Board (e.g., extension of time under 37 CFR 1.136(b) or 1.550(c) for filing an appeal brief), MPEP § 1205.01.

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

9. Petitions to reinstate appeals dismissed in the Technology Center. See MPEP § 1205.01.

10. Petitions from the denial of a request for reexamination, 37 CFR 1.515(c), MPEP § 2248.

11. Requests for extension of time in ex parte reexamination proceedings, 37 CFR 1.550(c).

12. 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.

13. 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.

14. 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 Patent Trial and Appeal Board, MPEP § 1204.03.

15. 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 information disclosure statement.

16. 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), where the application is before the Technology Center.

17. 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, subsection II.

18. Petitions under 37 CFR 1.91 to admit a model or exhibit as part of the record of an application, MPEP § 608.03.

19. Requests for the return of models, exhibits, or specimen under 37 CFR 1.94, MPEP § 608.03(a).

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

21. Petitions regarding sequence rules, 37 CFR 1.821 - 1.825 and 1.831 - 1.835.

22. Request for a certificate of statement of availability of deposit, MPEP § 2410.02.

1002.02(c)(1) Petitions Decided by the Director of the Technology Center Who Oversees Licensing and Review [R-07.2022]

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 the Technology Center who Oversees Licensing and Review:

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, MPEP § 710.

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, MPEP § 709, subsection II.

3. Petitions under 37 CFR 5.12(b) 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 relating to refusal of request for publication of a Statutory Invention Registration, 37 CFR 1.295 as in effect on March 15, 2013.

8. Petitions relating to request for withdrawal of request for publication of a Statutory Invention Registration, 37 CFR 1.296 as in effect on March 15, 2013.

9. Petitions relating to DOE property rights statements under 42 U.S.C. 2182, MPEP § 150.

10. Petitions relating to NASA property rights statements under 42 U.S.C. 2457, MPEP § 150.

11. Petitions relating to foreign filing licenses under 35 U.S.C. 184, MPEP § 140.

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

13. 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) [Reserved]

1002.02(c)(3) Petitions and Requests Decided by the Director of Technology Center 2900 [R-07.2015]

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

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

1002.02(c)(4) Petitions Decided in the Central Reexamination Unit [R-08.2017]

In addition to the items delegated to Technology Center Directors under MPEP § 1002.02(c), authority to decide the following is delegated to the Director of the Central Reexamination Unit (CRU). Where specifically indicated, the authority is further delegated to the CRU Supervisory Patent Reexamination Specialists (SPRS) as noted below:

  • 1. Petitions under 37 CFR 1.181(a)(1) from any action or requirement of any examiner in ex parte and inter partes reexamination proceedings including any request for reconsideration of a decision on such a petition. See MPEP § 1002.02(c), item 3, for petitions seeking supervisory review of prior decisions of petitions under 37 CFR 1.181(a)(1).
  • 2. Petitions under 37 CFR 1.550(c) for an extension of time in ex parte reexamination proceedings (further delegated to SPRS).
  • 3. Petitions under 37 CFR 1.956 for an extension of time in inter partes reexamination proceedings (further delegated to SPRS).
  • 4. Petitions under 37 CFR 1.59 to expunge papers (further delegated to SPRS).

Petitions in ex parte and inter partes reexamination proceedings for actions occurring after jurisdiction has transferred to the Patent Trial and Appeal Board (Board) or for petitions that have been expressly delegated to be decided by the Board are appropriately filed under 37 CFR 41.3. See MPEP §§ 1002.02(f) and 1002.02(j) for more information on petitions and other matters decided by the Board.

1002.02(d) Petitions and Matters Decided by Supervisory Patent Examiners [R-08.2017]

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 and 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 § 1207.04.

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 Certificates 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, MPEP § 1480.

5. Petitions under 37 CFR 1.324 to correct errors in joining inventors in a patent that is not involved in an interference, MPEP § 1481.02.

6. Disapproval of preliminary amendments under 37 CFR 1.115 or second (or subsequent) supplemental amendments (3rd reply) under 37 CFR 1.111, MPEP §§ 714.01(e) and 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 41.202 and MPEP § 2304.04 et seq.

8. Amendments presented after decision in an appeal by the Patent Trial and Appeal Board 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, MPEP § 608.02, subsection VIII.

10. Withdrawal from appeal of an application remanded by the Patent Trial and Appeal Board. See MPEP § 1211.01.

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

1002.02(e) [Reserved]

1002.02(f) Petitions and Matters Decided by the Chief Administrative Patent Judge of the Patent Trial and Appeal Board [R-07.2015]

The Chief Administrative Patent Judge is authorized to re-delegate authority to decide any of these petitions or matters to the Deputy Chief Administrative Patent Judge, to a Vice Chief Administrative Patent Judge, a Lead Administrative Patent Judge, or to an Administrative Patent Judge of the Patent Trial and Appeal Board.

1. If raised properly during ex parte reexamination and in a subsequent appeal, issues relating to an examiner’s determination that a reference raises a substantial new question of patentability. See 75 FR 36357 (June 25, 2010). This authority may be re-delegated to the panel of the Patent Trial and Appeal Board deciding the appeal in the reexamination.

2. Ordering, in the interests-of-justice, an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. 37 CFR 42.200(d).

3. Designation of members of the Patent Trial and Appeal Board to, on written appeal, review adverse decisions of examiners upon applications for patents, review appeals of ex parte reexaminations, conduct derivation proceedings, conduct inter partes reviews and post-grant reviews, initially and on request for reconsideration. 35 U.S.C. 6.

4. Designation of members of the Patent Trial and Appeal Board to conduct proceedings in an interference including the determination of priority and patentability of invention. Pre-AIA 35 U.S.C. 6.

5. Designation of members of the Patent Trial and Appeal Board to review appeals of inter partes reexaminations.

6. Requests related to superintending the functions of the Patent Trial and Appeal Board, including:

  • a. Requests for decision on a question of policy certified by a panel or an administrative patent judge of the Patent Trial and Appeal Board. 37 CFR 41.3(a).
  • b. Petitions to review a determination of a non-compliant brief. 37 CFR 41.37(d), 41.68(c), and 41.71(e).
  • c. Certification of a decision by a panel of the Patent Trial and Appeal Board to disqualify counsel for cause in a trial proceeding. 37 CFR 42.10(d).
  • d. Extensions of pendency for a period of up to six months in an inter partes or a post-grant review proceeding. 37 CFR 42.100(c), 42.200(c), and 42.300(c).
  • e. Petitions under 37 CFR 1.181, 1.182, and 1.183 from actions of the Patent Trial and Appeal Board.
  • f. Petitions for an extension of time for seeking rehearing in an ex parte appeal before the Patent Trial and Appeal Board.
  • g. Petitions to revive an application abandoned for, or an ex parte or inter partes reexamination terminated for, failure to file a timely corrected brief in reply to a Notification of Defective or Non-Compliant Brief. 37 CFR 1.137, 41.37, and 41.67.
  • h. Petitions to revive an inter partes reexamination terminated for failure to file a timely corrected Request to Reopen Prosecution in reply to an Order by the Patent Trial and Appeal Board denying a request to reopen prosecution pursuant to 37 CFR 41.77(b)(1).

7. Petitions under pre-AIA 35 U.S.C. 135(c):

1002.02(g) Petitions Decided by the Administrative Patent Judges [R-07.2015]

1. Certification of a question of policy to the Chief Administrative Patent Judge for decision. 37 CFR 41.3(a).

2. Motion to waive or suspend any rule in Subpart D of part 41 of title 37 CFR. See 37 CFR 41.104(b).

3. Declarations and re-declarations of interferences. 37 CFR 41.203.

4. Institutions and reinstitutions of derivation proceedings. 37 CFR 42.408(a).

5. Motion to suspend an interference involving a patent under ex parte or inter partes reexamination. 37 CFR 1.565(e) and 1.993.

1002.02(h) [Reserved]

1002.02(i) Petitions Decided by the Commissioner for Trademarks [R-08.2012]

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

1002.02(j) Petitions Decided by the Patent Trial and Appeal Board [R-07.2015]

1. Requests in a reply brief to consider a new argument not previously raised in an appeal brief or not responsive to an argument raised by the examiner. 37 CFR 41.41(b)(2).

2. Requests in an oral hearing to rely on a new argument based upon a recent relevant decision of the Patent Trial and Appeal Board or a Federal Court. 37 CFR 41.47(e)(2).

3. Requests made in a request for rehearing to review a panel’s failure to designate a new ground of rejection in its decision. 37 CFR 41.50(c).

4. Petitions to institute a trial. 37 CFR 42.4(a), 42.108, 42.208, 42.300, and 42.408.

5. Determination of the proper course of conduct in an interference or trial proceeding. 37 CFR 41.104, 42.5.

6. Authorizations to file a motion other than a petition requesting the institution of a trial. 37 CFR 41.121 and 42.20 – 42.25.

7. Motions including, but not limited to:

1002.02(k) Matters Decided by the General Counsel, the Office of General Law and the Solicitor [R-07.2022]

1002.02(k)(1) Petitions and Matters Decided by the General Counsel [R-07.2015]

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

2. Petitions (under 37 CFR 90.3(c) or 37 CFR 2.145(e)) 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 Patent Trial and Appeal Board or the Trademark Trial and Appeal Board.

3. Petitions under 37 CFR 11.2(d) from a final decision of the Director of the Office of Enrollment and Discipline, regarding enrollment or recognition.

4. Petitions under 37 CFR 11.2(e) from a final decision of the Director of the Office of Enrollment and Discipline, regarding disciplinary matters.

5. Appeals under 37 CFR 11.55 of initial decisions of hearing officers and requests for reconsideration under 37 CFR 11.56(c) in proceedings under 35 U.S.C. 32 in which the Director of the Office of Enrollment and Discipline seeks to exclude or suspend a practitioner from practice before the United States Patent and Trademark Office.

6. All contested decisions involving the Office of Enrollment and Discipline.

1002.02(k)(2) Requests Decided by the Office of General Law [R-07.2015]

1. Requests filed under the Freedom of Information Act (FOIA).

2. Administrative appeals of the FOIA Officer’s decision.

3. Certain uncontested decisions involving the Office of Enrollment and Discipline.

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 [R-07.2015]

1. Requests for Certificates of Correction under 37 CFR 1.322 or 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, 1481 and 1485.

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

3. Request to change inventorship pursuant to court order, 37 CFR 1.324, MPEP § 1481.02.

1002.02(m) Petitions Decided by the Director of the Office of Enrollment and Discipline [R-07.2015]

1. Petitions regarding enrollment or recognition under 37 CFR 11.2(c).

2. Requests for limited recognition under 37 CFR 11.9.

3. Petitions for reinstatement under 37 CFR 11.60.

4. Petitions to suspend the rules under 37 CFR 11.3.

5. Petition to withdraw a Rule to Show Cause under 37 CFR 11.11(b).

1002.02(n) [Reserved]

1002.02(o) Petitions and Other Matters Decided by the Deputy Director of the USPTO [R-07.2015]

The Deputy Director of the USPTO has been delegated the authority to decide petitions to the Director of the USPTO from actions taken by the Patent Trial and Appeal Board for matters not otherwise delegated to the Chief Administrative Patent Judge, the Deputy Chief Administrative Patent Judge, a Vice Chief Administrative Patent Judge, or administrative patent judge(s). If there is a vacancy in the position of Deputy Director of the USPTO, decisions on these petitions will be signed by the Director of the USPTO.

Upon receipt of a petition, the entire 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 Director of International Patent Legal Administration [R-07.2015]

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 the withdrawal of attorney or agent of record in proceedings before PCT Operations and/or International Patent Legal Administration, 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 International Patent Legal Administration.

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 International Patent Legal Administration.

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 International Patent Legal Administration.

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 International Patent Legal Administration other than the circumstances set forth in paragraph 6, above.

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

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

10. 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.

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

12. Petitions under 37 CFR 1.182 or 1.183 dealing with circumstances other than those set forth in paragraph 11, but relating to issues under the PCT.

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

14. Requests under PCT Rule 26bis.3, 37 CFR 1.55, or 37 CFR 1.78 to restore the right of priority or domestic benefit in an international application filed under the PCT, a national stage application under 35 U.S.C. 371, or in an application which claims the benefit of or priority to an international application filed under the PCT.

15. Petitions for the acceptance of a delayed priority claim under 37 CFR 1.55 filed in a national stage application under 35 U.S.C. 371 or in an application which claims the benefit of or priority to an international application filed under the PCT.

16. Petitions for the acceptance of a delayed domestic benefit claim under 37 CFR 1.78 filed in a national stage application under 35 U.S.C. 371 or in an application which claims the benefit of or priority to an international application filed under the PCT.

17. 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).

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

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

20. Requests for participation in a Patent Prosecution Highway program (www.uspto.gov/ patents/init_events/pph/index.jsp).

21. Petitions to Make Special in accordance with international agreements with foreign patent offices.

1002.02(q) Petitions and Requests Decided by the Director of Office of Patent Application Processing (OPAP) [R-07.2015]

1. Requests under 37 CFR 1.48 filed on or after September 16, 2012 to correct inventorship in a nonprovisional application.

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

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

4. 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 Patent Application Processing.

5. 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 Patent Application Processing.

6. 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.

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

8. Petitions for the withdrawal of attorney or agent of record under 37 CFR 1.36 in patent applications involved in proceedings before the Office of Patent Application Processing.

1002.02(r) Petitions Decided by the Director of Office of Data Management [R-07.2015]

1. Petitions to withdraw holding of abandonment where a notice of abandonment has been, or could have been properly mailed by the Office of Data Management.

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 for republication of an application, 37 CFR 1.221(a), MPEP § 1130.

1002.02(s) Petitions and Matters Decided in the Technology Centers [R-07.2015]

The following petitions to make patent applications special under the accelerated examination program set forth in MPEP § 708.02(a) are decided in the Technology Centers:

a. petitions filed with payment of fee under 37 CFR 1.17(h);

b. petitions filed with a statement that the invention will materially enhance the quality of the environment (37 CFR 1.102(c)(2)(i) and MPEP § 708.02, subsection III);

c. petitions filed with a statement that the invention will materially contribute to the development or conservation of energy resources (37 CFR 1.102(c)(2)(ii) and MPEP § 708.02, subsection IV);

d. petitions filed with a statement that the invention will materially contribute to countering terrorism (37 CFR 1.102(c)(2)(iii) and MPEP § 708.02, subsection V); or

e. petitions filed for reasons not otherwise provided for.

1002.02(t) Requests Decided by the Deputy Commissioner for Patents who oversees the Office of Patent Information Management [R-07.2022]

The Deputy Commissioner for Patents who oversees the Office of Patent Information Management has been delegated the authority to decide requests from participants in the Electronic Office (e-Office) Action Program to reset a time period for reply when a reply is due, an email notification has been delayed or was not received, and the participant contacted the Electronic Business Center (EBC) within one-month from the email date. MPEP § 710.06.

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Last Modified: 02/16/2023 12:58:14