The Office shall not be subject to any administratively or statutorily imposed limitation on positions or personnel, and no positions or personnel of the Office shall be taken into account for purposes of applying any such limitation
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The authority of the Director of the USPTO to review and supervise the work of the Office is exercised by the promulgation of the Rules of Practice; issuance of orders, notices and memoranda stating Office policies and modes for effectuating these policies; decisions on petitions by applicants; and by the designation of particular cases which must be submitted to the Director of the USPTO or other officials authorized by the Director of the USPTO. The present Chapter deals with the latter two items. The line of demarcation between appealable matters for the Patent Trial and Appeal Board (Board) and petitionable matters for the Director of the U.S. Patent and Trademark Office (Director) should be carefully observed. The Board will not ordinarily hear a question that should be decided by the Director on petition, and the Director will not ordinarily entertain a petition where the question presented is a matter appealable to the Board. See MPEP Chapter 1200 for more information on appealable matters.
37 CFR 1.181(g) states, "The Director may delegate to appropriate Patent and Trademark Office officials the determination of petitions."
The various delegations to various Office officials are set forth in this Chapter.
The delegations set forth in this Chapter do not confer a right to have a matter decided by a specific Office official, rather, such delegations aid in the efficient treatment of petitions by the Office. A delegation of supervisory or higher level review authority over a matter carries with it the authority to decide the matter ab initio.
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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).
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:
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:
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.
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.
1. Requests under 37 CFR 1.48 for correcting inventorship require a fee as set forth in 37 CFR 1.17(i).
2. Petitions to suspend action under 37 CFR 1.103(a) require a fee as set forth in 37 CFR 1.17(g).
3. Petitions to withdraw an application from issue under 37 CFR 1.313 require a fee as set forth in 37 CFR 1.17(h).
4. Petitions for an extension of time under 37 CFR 1.136(a) require varying fees. See 37 CFR 1.17(a)(1)-(5).
5. Requests to suspend action under 37 CFR 1.103(b) or (c) require a fee set forth in 37 CFR 1.17(i).
6. Requests to defer examination under 37 CFR 1.103(d) require a fee set forth in 37 CFR 1.17(i) and publication fee set forth in 37 CFR 1.18(d).
Form paragraph 10.30 may be used to generate the header information for a petition decision.
In re Application of: [1] : Appl. No.: [2] : DECISION ON PETITION Filed: [3] : [5] For: [4] :
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.
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.
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 deter
