1002 Petitions to the Director of the USPTO
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Section Frequency Chart
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(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.
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).
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).
A petition should include:
- A statement of the type of relief requested and the authorizing provision of statute or rules, if applicable;
- A statement of the relevant facts;
- An identification of the points that are to be reviewed; and
- 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.
- 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.
Any petition which is not filed “within 2 months from the action complained of may be dismissed as untimely”
- the 2-month time period in 37 C.F.R. 1.181(f) applies to petitions under any section that does not specify the time period within which a petition must be filed (i.e. 37 C.F.R. 1.182 and 1.183)
Often, the action complained of (i.e. 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 an applicant requests reconsideration of the requirement for a new drawing, the examiner’s action on the 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 a reply to the rejection of the claims may extend beyond the 2 month period
- the 2 month period is not extendible under 37 C.F.R. 1.136(a) since the time is within the discretion of the Commissioner
