1003 Matters Submitted to Technology Center Directors [R-07.2022]

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:

  • a. request raises a novel issue or about which there is some question;
  • b. request is for a patent known to be in litigation; or
  • c. request deals with a legal matter (e.g., the insertion of foreign priority data or cross referencing to prior U.S. patent applications) unless the file reflects that the examiner has already ruled on the matter and that failure to print the material was clearly an Office error, in which case it will be handled by the Certificates of Correction Branch.

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:

  • a. there is a “compelling reason” to order reexamination, and
  • b. at least one claim in the patent is prima facie unpatentable over prior patents and/or printed publications. See 37 CFR 1.520, MPEP § 2239.

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.