© 2009, Michael E. Kondoudis

Introduction

Most actions during prosecution of a patent application in the USPTO are eventually subject to quasi-judicial review by an appeal to the Board of Patent Appeals and Interferences.  The classic example of an action that is subject to this type of review is an art (§102 and/or §103) rejection of a claim. 

Other actions, however, are not subject to review by an appeal.  Rather, the only relief available is administrative review.  An example of this type of action is a review of a restriction requirement.  This administrative review is conducted, in part, through petition practice.

Still other actions, such as the revival of an abandoned application, may only be requested by petition.

 

The Starting Points for Any Petition

The Director of the USPTO has delegated to various USPTO officials the authority to decide certain petitions.  The various delegations are set forth in Chapter 1000 of the MPEP.  

The specific form and content of many common petitions are set forth in the Rules and the MPEP.  For example, the requirements of a petition to revive an abandoned application are set forth in 37 CFR 1.137 and MPEP 711.03(c). 

37 CFR 1.181(b) sets forth the general requirements for the content of a petition.  This Rule, along with section 1000 and any other relevant section(s) of the MPEP, should be primary resources for anyone drafting a petition.

 

The Requirements

Every petition in the USPTO must satisfy the following 5 requirements:

 

1.  The petition must be in writing (see 37 CFR 1.2).

Business with the USPTO should almost always be transacted in writing.  Enough said.

 

2.  The petition must: contain a statement of relevant facts; identify the issue(s) or error(s) presented for review; and state the action or relief sought by the petition.  (see 37 CFR 1.181(b)).

Every petition should be as complete as possible and provide all of the evidence necessary for the rendering of a decision.

 

3.  The petition must be accompanied by any required fee (see 37 CFR 1.181(d)).

The Office may properly dismiss any petition for lack of or insufficient fee.  Be sure to consult the USPTO’s current fee schedule here.

 

4.  The petition must be timely filed in compliance with 37 CFR 1.181(f), or as required in a specific statute or regulation.

As a general rule, a petition must be filed within 2 months from the date the action complained of occurred or it may properly be dismissed as untimely.  

 

5.  The petition must comply with any specific requirements as provided by statute, regulation or USPTO policy.

Review any applicable statute, regulation or USPTO policy relating to the issue being petitioned to determine if there are other requirements specific to that petition.

 

Final Points

1.  Petitions do not stay periods for reply - The mere filing of a petition will not stay the period for replying to an examiner’s action that may be running against an application or act as a stay of other proceedings. (37 CFR 1.181(f)).

2.  Be sure to separate each distinct subject, inquiry or request into a separate petition - different branches or sections of the USPTO may consider/decide different matters.  Filing separate papers will help to avoid confusion and delay in answering papers dealing with different subjects (see 37 CFR 1.4(c)).

3.  Send the petition to the correct decision maker – a petition should be directed to the USPTO official delegated the authority to decide that petition. (see MPEP Chapter 1000).

4.  The two-month period to file a petition is not extendable. (37 CFR 1.181(f)).

5.  The USPTO provides several fillable pdf petition forms on its website here.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Share This

© 2009, Michael E. Kondoudis

This post discusses a less common but nonetheless important point that my earlier post on this subject did not – the mechanics of how to claim priority to a foreign patent document, along with a few examples.

Generally, the approach for claiming the benefit of foreign priority is similar to claiming domestic priority. There are a few more requirements to keep in mind, however.

 

THE RULE AND REQUIREMENTS

The controlling rule here is 37 CFR § 1.55, entitled Claim for Foreign Priority, which states:

An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).

Section 1.55(a) goes on to impose a non-extendable time limit to make the claim, stating that:

the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.

Pursuant to § 1.55, the claim for the benefit of foreign priority must satisfy a few more requirements than a claim for domestic priority. In particular, the claim must identify the foreign application for which priority is claimed by specifying:

          1.  the application number of the priority document;

          2.  the country (or intellectual property authority) with which the priority document was filed

          3.  the day, month, and year the priority document was filed.

Also, of course, the foreign patent authority must have reciprocity with the USPTO, there must be an identity of inventorship, and the U.S. application must almost always have been filed within 12 months from the filing date of the priority document.

A FEW EXAMPLES


This application claims priority under 35 U.S.C. § 119 to German patent application DE 100 21 175.7, filed January 4, 2005, the disclosure of which is incorporated herein by reference.


This application is based on and claims the benefit of priority from Japanese Patent Application No. 5-234567, filed on October 15, 2007, the contents of which are incorporated by reference.


The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Share This