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:
- 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.