Petitions to the Director of the USPTO

37 CFR 1.4 Nature of correspondence and signature

requirements.

*****

(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.

*****

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 parte

prosecution of an application, or in

ex parte

or

inter 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.

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

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

etition 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

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

ure 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.