Petitions and Requests Decided by the Deputy Commissioner Who Oversees the Office of Petitions or Assigned Staff in the Office of Petitions, the Office of Patent Legal Administration and the MPEP Staff Office

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. Petitions for an unintentionally delayed foreign priority claim,

37 CFR

1.55(e)

and

MPEP §

214.02

.

5. Petitions to restore the right of foreign priority,

37 CFR

1.55(c)

and

MPEP §

213.03

, subsection III.

6. Petitions for late filing of certified copy of

foreign application,

37 CFR 1.55(f)

or

(g)

, as applicable, and

MPEP §

215.02

.

7. Petitions for an unintentionally delayed domestic benefit claim,

37 CFR

1.78(c) and (e)

and

MPEP §

211.04

.

8. Petitions to restore the benefit of a provisional

application,

37 CFR 1.78(b)

and

MPEP §

211.01(a)

, subsection II.

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,

37 CFR 1.313(c)(3)

,

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

II.

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,

37 CFR 1.313(c)(3)

,

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 in the regulations.

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

pon 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

determination of the length of the patent term extension under

37 CFR 1.701

for original applications, other than designs, filed on or after June 8, 1995 and

before May 29, 2000,

MPEP § 2720

.

26. Requests for reconsideration of the patent term adjustment

indicated in the notice of allowance or in the patent, under

37 CFR 1.705

,

MPEP §

2734

, subsection I.

27. Requests for reinstatement of the period of patent term

adjustment reduced pursuant to

37 CFR 1.704(b)

under

37 CFR

1.705(c)

,

MPEP § 2734

, subsection II.

28. Petitions relating to the filing date of patent applications

under

37 CFR

1.53

,

MPEP § 506.02

.

29. 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 Petitions or the Office

of Patent Legal Administration.

30. 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 Petitions or the Office of

Patent Legal Administration.

31. Petitions for extensions of time under

37 CFR 1.136(b)

in applications before the Office of Petitions or the Office of Patent Legal

Administration (

MPEP §

710.02(e)

).

32

vert 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 Petitions or the Office of

Patent Legal Administration.

31. Petitions for extensions of time under

37 CFR 1.136(b)

in applications before the Office of Petitions or the Office of Patent Legal

Administration (

MPEP §

710.02(e)

).

32. Petitions, or requests at the initiative of the USPTO by someone

other than a Technology Center Director, to withdraw patent applications from issue

under

37 CFR

1.313(a)

before payment of the issue fee.

33. Petitions, or requests at the initiative of the USPTO by someone

other than a Technology Center Director, to withdraw patent applications from issue

after payment of the issue fee under

37 CFR 1.313(b)

,

MPEP §

1308

, subsection II.

34. Petitions to withdraw patent applications from issue after

payment of the issue fee under

37 CFR 1.313(c)

,

MPEP §

1308

, subsection I.B.

35. Petitions to expunge papers or assignment information from

patent applications under

37 CFR 1.59

which were not

submitted under

MPEP §

724.02

or as part of an information disclosure statement

(IDS).

36. Petitions to expunge recorded assignment

information,

37 CFR

1.182

and

MPEP § 323.01(d)

.

37. Petitions to Make Special based on inventor’s

health,

37 CFR

1.102(c)(1)

and

MPEP § 708.02

, subsection I.

38. Petitions to Make Special based on inventor’s age,

37 CFR

1.102(c)(1)

and

MPEP § 708.02

, subsection II.

39. Requests for prioritized examination under

37 CFR

1.102(e)

,

MPEP § 708.02(b)

.

40. Requests for participation in a Patent Prosecution

Highway program (

www.uspto.gov/PPH

).

41. Requests for participation in the Law School Pilot

Program.

42. Petitions for retroactive foreign filing license

under

37 CFR

5.25

,

MPEP § 140

, subsection II.

43

37 CFR

1.102(c)(1)

and

MPEP § 708.02

, subsection II.

39. Requests for prioritized examination under

37 CFR

1.102(e)

,

MPEP § 708.02(b)

.

40. Requests for participation in a Patent Prosecution

Highway program (

www.uspto.gov/PPH

).

41. Requests for participation in the Law School Pilot

Program.

42. Petitions for retroactive foreign filing license

under

37 CFR

5.25

,

MPEP § 140

, subsection II.

43. Petitions to show proprietary interest sufficient

to make application on behalf of and as agent for the inventor under

37 CFR

1.46

(applicable in applications filed on or after September

16, 2012),

MPEP § 409.05

, subsection II.

44. Petitions to accept an oath or declaration without

a joint inventor’s signature,

pre-AIA 37 CFR 1.47(a)

(applicable in applications filed before September 16, 2012),

MPEP §

409.03(a)

.

45. Petitions to accept an oath or declaration from a

person to whom an inventor has assigned or agreed in writing to assign the invention,

or who otherwise shows sufficient proprietary interest in the matter justifying such

action,

pre-AIA 37

CFR 1.47(b)

(applicable in applications filed before September

16, 2012 where none of the inventors are available to sign),

MPEP §

409.03(b)

.

46. Requests for Corrected Patent Application

Publication under

37 CFR 1.221(b)

,

MPEP § 1130

, subsection II.

47. Petitions to change entity status, including the

payment of additional fees,

37 CFR 1.28

and

1.29

.

48. Return of papers containing discourteous remarks.

See

MPEP §§

714.19

and

714.25

.

49. Petitions to issue a corrected patent,

37 CFR

1.322(b)

.

50. Requests for a certificate of correction that

affects related U.S. application data or foreign priority data.