Petitions Practice Within the USPTO on Patent Matters

This page provides some of the basic principles of petitions practice.  As with all aspects of patent prosecution, there are laws and regulations that must be followed by employees of the USPTO in the area of petitions.  The USPTO recommends that inventors and applicants unfamiliar with the patent laws, rules, and USPTO procedures, consult a registered patent attorney or agent to conduct the prosecution of their patent applications.  Although the USPTO may not recommend a particular patent attorney or agent, you can select from a list of patent attorneys and agents  registered to practice before the USPTO.

For those patent matters that are not subject to an appeal to the Board of Patent Appeals and Interferences and the federal courts, supervisory and administrative review is conducted, in part, by the rendering of decisions on petitions.  The Director of the USPTO (formerly the Commissioner) has delegated to appropriate USPTO officials the authority to decide certain petitions.  The various delegations are set forth in Chapter 1000 of the MPEP.   The more common types of petitions handled in the Office of Petitions are identified below and the requirements which must be met for the granting of a petition are discussed. Where appropriate, links to other information are provided.

REQUIREMENTS OF A PETITION

In general each petition has five (5) requirements. These requirements are as follows:

Specific Types of Petitions Treated in the Office of Petitions

Inventor Unavailable • Correct Filing Date • Abandonment or Lapse • Maintenance Fee

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Where a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, a petition under 37 CFR 1.47(a) may be filed to permit acceptance of an application filed by the other inventor(s) on his or her behalf and that of the non-signing inventor. The submission must set forth the diligent efforts made to contact the non-signing inventor, the required fee and the last known address of the non-signing inventor.

Similarly, whenever all of the inventors or the sole inventor refuse(s) to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventors have assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action may file an application for patent on behalf of the non-signing inventor(s). A petition to permit filing under 37 CFR 1.47(b) must be submitted with the oath or declaration executed by the Rule 47 applicant on behalf of the non-signing inventor(s).

Either of the above petitions must include:

1.  Proof that the non-signing inventors were presented with the application papers and refused to sign the oath or declaration or that the non-signing inventor(s) could not be found or reached after diligent effort;

2.  The required fee; and

3.  The last known address of the non-signing inventor(s).

In a continuation or divisional application, a copy of an oath or declaration from a prior application may be filed. If a petition under 37 CFR 1.47 was granted in the prior application and the non-signing inventor(s) did not later join in the application, a copy of the decision granting status under 37 CFR 1.47 in the prior application must also be filed.

B. Petitions to Obtain or Correct a Filing Date       See MPEP 600

37 CFR 1.53  provides procedures for filing patent applications. All applications filed under 37 CFR 1.53(b) require a specification, including at least one claim, drawings, if necessary to understand the claimed subject matter, an oath or declaration, and the required filing fee. Before an application is examined to determine patentability, the application, by law, must be complete so as to receive an official filing date. If the application is complete, the applicant will receive a filing date receipt. Failure to file a complete application will result in the USPTO forwarding a communication to the applicant noting that errors/problems exist in the application filing which require correction.

When filing an application for patent, applicant is encouraged to submit a self addressed postcard with the application papers. See MPEP 503.  The postcard should indicate what is being submitted to the USPTO. For example only, the postcard should state "transmitted herewith is an application for patent for John J. Johns, including 5 pages of specification, 6 claims, 4 sheets of drawings having 9 figures therein, a signed declaration, and a check in the amount of $_____for the statutory filing fee."  (Be sure to check the latest fee sheet for the correct amount of fees to submit.)  The postcard will be date stamped by the USPTO mailroom and will serve as proof of what was submitted by applicant.  It is important that the postcard itemize all of the components of an application.  If the postcard does not itemize each of the components of the application, it will not serve as evidence that any component which was not itemized was received by the USPTO.

Once the official filing receipt for the patent application is received, a review of the filing receipt should be made to ascertain whether the filing date and other application data are correct. If the information there on is incorrect, applicant should promptly contact the USPTO. Keep in mind that the filing date receipt is not an indication that a patent will issue. It merely signifies that a complete application has been filed and that the application will be forwarded to a patent examiner for examination purposes.

To provide applicants with a more detailed recitation of the typical types of errors committed in filing applications and how to rectify such errors, the following topics and discussion relating thereto is provided.

1. Common Errors When Filing Applications

• The application is not accompanied by a return postcard listing the parts of the application in sufficient detail to serve as evidence of the exact papers which were filed.
• The application is not accompanied by the correct filing fee or the appropriate declaration for application (see for example, http://www.uspto.gov/web/forms/sb0001.pdf).
• The applicant wants the date the application was mailed to the USPTO as the application filing date, but fails to use the "Express Mail Post Office to Addressee" service of the U.S. Postal Service to deliver the application.  Only the "Express Mail Post Office to Addressee" service of the US Postal Service can be used to obtain the date of mailing as an application filing date.
• The applicant fails to retain a complete copy of the application.
• The nonprovisional application is filed without a claim.
• The copy of the application forwarded to the USPTO is missing one or more pages of the specification or drawings.
• The application is filed without a correspondence address.

2. Things to Remember

• The patent application process is complex.  The USPTO cannot assist in the preparation of application papers.  If you are ready to apply for a patent, we strongly advise you to contact a registered patent attorney or agent to assist you.
• There are several types of patent application, for example, utility, design, provisional, nonprovisional, each of which requires different filing fee and has a different legal effect.
• The application must be accompanied by a request not to publish the application, if pre-patent grant publication is not desired.

3. Remedy to Correct Errors

The usual remedy to correct a 37 CFR 1.53 filing error is to file a petition directed to the Office of Petitions explaining the delay in submitting the omitted item . Any missing items should accompany the petition and should be accompanied by the fee required by 37 CFR 1.17(h).

Remember, copendency cannot be waived as it is a statutory requirement.  Therefore, applicant must petition to revive the parent application under 37 CFR 1.137 to obtain copendency if the parent application became abandoned prior to filing of the continuing application.

4a. Express Mail Errors

Typical Errors committed by applicants who use the provisions of 37 CFR 1.10 ("Express Mail" procedures) are described below.

• Problems arise when correspondence is deposited in an Express Mail drop box late in the day after the last pick-up has occurred.  The "Date-In" on the label is the date the Post Office receives the correspondence.  Applicants should deposit the correspondence directly with an employee of the US Postal Service at the Post Office window when possible and get a legible copy of the "Express Mail" mailing label with the "Date-In" clearly marked.  Applicants should then check the "Date-In" on the receipt. The "Date-In" must be entered by the Post Office, not applicant (See MPEP 513);
• Applicants file separate papers or different applications in the same mailing envelope which do not each have the Express Mail number thereon;
• The proper postage has not been provided.
• The Express Mail label is not properly addressed.

4b. Remedy to Correct Errors

Express Mail correspondence received in the USPTO, but given a date other than "date-in" on the receipt.

In accordance with 37 CFR 1.10(c), one may file a petition to have an earlier filing date accorded, provided that:

(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;

(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail;" and

(3) The petition includes a true copy of the "Express Mail" mailing label showing the "date-in," and of any other official notation by the USPS relied upon to show the date of deposit.

Express Mail correspondence given incorrect date or no date by the USPS.

In accordance with 37 CFR 1.10(d), one may file a petition to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:

(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;

(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail"; and

(3) The petition includes a showing which establishes, to the satisfaction of the Commissioner, that the requested filing date was the date the correspondence was deposited in "Express Mail Post Office to Addressee" service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the "Express Mail Post Office to Addressee" service of the USPS.

Express Mail correspondence not received in the USPTO.

In accordance with 37 CFR 1.10(e), one may file a petition to have such correspondence considered as having been filed in the USPTO on the USPS deposit date, provided that:

(1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;

(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail;"

(3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the "Express Mail" mailing label thereon, a copy of any returned postcard receipt, a copy of the "Express Mail" mailing label showing the "date-in," a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the "date-in" on the "Express Mail" mailing label or other official notation entered by the USPS, a showing pursuant to paragraph B(3), above, that the requested filing date was the date the correspondence was deposited in "Express Mail Post Office to Addressee" service prior to the last scheduled pickup for that day; and

(4) The petition includes a statement which establishes, to the satisfaction of the Commissioner, the original deposit of the correspondence, and that the copies of the correspondence, the copy of the "Express Mail" mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence and original " Express Mail" mailing label, returned postcard receipt, and official notation entered by the USPS.

5a. Missing Drawing(s)/Figure(s) or Omitted Specification Page(s)

(1)  A drawing is required for a filing date where it is necessary for the understanding of the subject matter sought to be patented ( 35 U.S.C. 111 and 113, 1st sentence), or if described in the specification (MPEP, 506, 601.01 and 608.02);

(2)  Check the application before filing to ensure that any drawing referred to in the specification is present;

(3)  Check the drawings to ensure that each figure is properly labeled;

(4)  Number each page of the specification in consecutive order and review the application for completeness before filing;

(5)  A postcard receipt should contain a specific itemization of all the items being submitted (MPEP 503). Therefore, the post card receipt should specifically itemize the number of pages of the specification, the number of pages of the declaration and the number of sheets of drawings (including the number of figures contained thereon) being submitted. (Note: hundreds of postcard receipts each year are never returned to counsel because correct postage or return address is lacking);

(6)  The best evidence of what the Office received is a properly itemized postcard receipt stamped with the mail room date.

5b. Remedy to Correct Errors

If an application is filed without all the pages of the specification or without all of the figures of the drawings, the Office will still accord a filing date to any application that contains something that can be construed as a written description, any necessary drawing, and, in a nonprovisional application, at least one claim. The Office will mail a notice to applicant indicating that the application has been accorded a filing date, but is missing pages of the specification or figures of drawings.  The mailing of the notice will permit applicant to either: (1) promptly establish prior receipt in the USPTO the pages at issue (generally by way of a date-stamped postcard receipt); or (2) promptly submit the omitted page(s) and accept the date of submission as the application filing date.  See MPEP 601.01 (d).

An applicant asserting that the page(s) was in fact deposited in the Office with the application papers must promptly file a petition under 37 CFR 1.53(e) (and the petition fee under 37 CFR 1.17(h) which will be refunded if it is determined that the page(s) was in fact received by the USPTO) with evidence of such deposit.

Applicants desiring to submit the omitted page(s) and accept the date of submission as the application filing date must promptly submit the omitted pages or drawings and include an oath or declaration in compliance with 37 CFR 1.63 and 1.64 referring to such page(s) and a petition under 37 CFR 1.182 (with the petition fee under 37 CFR 1.17(h)) requesting the later filing date.

Failure to promptly (within an extendable two month period) file a petition under 37 CFR 1.53(e) or 1.182 in response to such notice will result in the Office treating the application as including only those papers originally deposited.  Amendment of the specification is required in a nonprovisional application to renumber the pages consecutively and to cancel any incomplete sentences.

Petitions to obtain or correct a filing date should be directed to the attention of the Office of Petitions and must include the petition fee or an authorization to charge the petition fee to a deposit account. If the petition alleges that no defect exists, a request for refund of the petition fee maybe included in the petition.

Revival

37 CFR 1.137 covers petitions to revive applications abandoned for failure to prosecute, or failure to pay the required issue fee and petitions to revive a lapsed patent for failure to pay any balance of the issue fee due.  There are two kinds of petitions to revive identified in this regulation. 37 CFR 1.137(a) addresses revival based upon an unavoidable delay in prosecution or payment of the required issue fee, whereas 37 CFR 1.137(b) addresses revival based upon an unintentional delay in prosecution or payment of the required issue fee.

(a) Requirements for a petition under 37 CFR 1.137(a) (delay was unavoidable):   >>obtain form

     (A) where the applicant deliberately permits an application to become abandoned (i.e., due to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot be overcome, or that an invention lacks sufficient commercial value to justify continued prosecution);      (B) where the applicant chooses not to seek or persist in seeking revival of an abandoned application, or where the applicant deliberately chooses to delay seeking revival of an abandoned application;

(11)  An intentional delay resulting from a deliberate course of action chosen by the applicant is not affected by: (a) the correctness of the applicant (or applicant's representative) decision to abandon the application or not to seek or persist in seeking revival of the application; (b) the correctness or propriety of a rejection, or other objection, requirement, or decision by the Office; or (c) the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision not to seek or persist in seeking revival.

(12)  An intentional abandonment of an application, or an intentional delay in seeking either the withdrawal of a holding of abandonment in, or the revival of, an abandoned application, precludes a finding of unavoidable or unintentional delay pursuant to 37 CFR 1.137.

(13) Where an applicant chooses not to seek revival of an application, or chooses not to persist in seeking revival after an adverse decision on an earlier petition, the resulting delay cannot be considered to be unavoidable or unintentional.

(14) A provisional application can be revived for a period not to exceed 12 months from the date of filing, even if the petition is filed outside this 12 month period.

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Maintenance fees may be paid during the 6 month period following the 3rd, 7th, and 11th anniversary of issuance of a utility patent. If not timely paid, a surcharge will be required between 3 ½ and 4 years, 7 ½ and 8 years, and 11 ½ and 12 years after issuance of the patent. Utility patents will expire after 4 years, 8 years and 12 years from issuance if the maintenance fee and surcharge, if required, are not timely paid. The due date for payment of maintenance fees in reissue applications  is computed from the date of grant of the original non reissue application.  See MPEP Chapter 2500.

1. Payment Prior to Expiration     See MPEP 2580

A patentee who is not satisfied with the USPTO refusal to accept and record a maintenance fee paid prior to expiration of a patent may petition under 37 CFR 1.377. The requirements for acceptance of the payment are:

(a) Requirements when the delay was unavoidable.  >>obtain form

Payment of maintenance fees after expiration of the patent will be accepted and the patent will be reinstated as if it had never expired, provided the following are filed:

(1)  Petition under 37 CFR 1.378(b) signed by registered attorney or party in interest as outlined at 37 CFR 1.378(d).

(2)  Maintenance fee set forth in 37 CFR 1.20 (e)-(g).

(3)  Surcharge set forth in 37 CFR 1.20(i)(1).

(4)  Showing of unavoidable delay including an enumeration of steps taken to ensure timely payment, the date and the manner in which patentee became aware of the expiration of the patent, and the steps taken to file the petition promptly.

(b)   Requirements when the delay was unintentional.  >>obtain form

Payment of maintenance fees after expiration of the patent will be accepted and the patent will be reinstated as if it had never expired, provided the following are filed:

(1)  Petition under 37 CFR 1.378(c) filed within 24 months after the six-month grace period signed by registered attorney or party in interest as outlined at 37 CFR 1.378(d).

A first request for reconsideration will be entertained provided the following are filed within two months, or such other time as set in an adverse decision on a petition filed under 2(a) or 2(b) above:

(1) Petition under 37 CFR 1.378(e).

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