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:
7. Petitions under pre-AIA 35 U.S.C. 135(c):
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.
Petitions relating to Trademarks are covered in Chapter 1700 of the Trademark Manual of Examining Procedure.
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:
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.
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.
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.
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.
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).
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.
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.
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.
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.
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.
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.
The following is a list of matters which are submitted to the appropriate Technology Center Director, together with a reference to any section of this manual where such matters are more fully treated.
1. Requests for a certificate of correction in which the:
2. Return of papers entered in the file wrapper. See MPEP § 719.01.
3. Certain rejections on double patenting of divisional (or parent) case when restriction or election of species has previously been required, MPEP § 804.04.
4. Request for patentability report, MPEP § 705.01(e).
5. Actions which hold claims unpatentable on grounds of rejection that would also be applicable to corresponding claims in a patent.
6. Interferences between applications neither of which is in condition for allowance.
7. Letters requesting jurisdiction from the Patent Trial and Appeal Board of applications involved in appeal or interference.
8. Letters to an applicant suggesting claims for purposes of interference, the adoption of which by the applicant would result in the withdrawal of an application from issue, MPEP § 2304.02.
9. Examiner’s answers containing a new interpretation of law. See MPEP § 1207.02.
10. Proposed interferences between applications whose effective filing dates differ by more than 6 months. See MPEP § 2302.
11. Protests filed against issuance of a patent. See MPEP § 1901.06.
12. Letters suggesting claims to an application in issue for purposes of interference with a patent. See MPEP § 2304.04.
13. Requests by the examiner to the Patent Trial and Appeal Board for reconsideration of a decision before forwarding to the Office of the Deputy Commissioner for Patents who oversees the Office of Petitions, MPEP § 1214.04.
14. Second or subsequent suspension of action in patent application under 37 CFR 1.103 on examiner’s initiative. MPEP § 709.
15. Request by the examiner to withdraw an application from issue, MPEP § 1308.01.
16. An unusual fact situation in a patent that establishes:
17. Applications containing examiner’s answers lacking the appropriate indication that an appeal conference was held. See MPEP § 1207.01.
All unusual questions of practice may be referred to the Technology Center Directors.
Existing practice requires the primary examiner to be personally responsible for the following actions:
1. Allowances (MPEP § 1302.13).
2. Examiner’s amendments (MPEP § 1302.04).
3. Quayle actions (MPEP § 714.14).
4. Final rejections (MPEP § 706.07).
5. Final Office actions containing a final requirement for restriction (MPEP § 803.01).
6. Withdrawal of final rejection (MPEP §§ 706.07(d) and 706.07(e)).
7. Actions on amendments submitted after final rejection (MPEP § 714.12).
8. All examiner’s answers on appeal (MPEP § 1207).
9. Actions reopening prosecution (MPEP § 1214.07).
10. Entry of amendments under 37 CFR 1.312 that are directed merely to formal matters or the cancellation of claims (MPEP § 714.16).
11. Rejection of a previously allowed claim (MPEP § 706.04).
12. Holding of abandonment for insufficient reply (MPEP § 711.03(a)).
13. Decision on affidavits or declarations (for example, under 37 CFR 1.130(a) (MPEP § 717.01(a) et seq. ), 37 CFR 1.130(b) (MPEP § 717.01(b) et seq. ), 37 CFR 1.131(a) (MPEP § 715.08), 37 CFR 1.131(c) (MPEP § 718), or 37 CFR 1.132 (MPEP § 716)).
14. First request for suspension of examiner’s action (MPEP § 709).
15. Decision on reissue oath or declaration (MPEP § 1414).
16. International Preliminary Examination Reports (MPEP § 1879).
17. Classification of allowed cases (MPEP § 903.07).
18. Treatment of newly filed application which obviously fails to comply with 35 U.S.C. 112 (MPEP § 702.01).
19. Consideration of the advisability of a patentability report (MPEP § 705.01(a)).
20. Requests filed prior to September 16, 2012 under 37 CFR 1.48 for correction of inventorship or to accept amendments, statements, or oaths or declarations under 37 CFR 1.48 (See MPEP § 602.01(c)(
