In some cases, mostly those relating to the interpretation of substantive law, a Patent Office Examiner's decision may be appealed - first to an administrative panel and later to the Federal Courts. These appeals typically relate to whether an invention is present in the prior art, whether the patent application adequately describes the invention, and could even relate to whether the subject matter of a patent application is patent eligible.
What about when an issue relates to a ministerial or administrative type determination? One option is to Petition to the Examiner's boss, that is, the Director of the Patent Office. What does this petition involve?
Under 37 C.F.R. 1.181, a petitioner can petition to the Director of the PTO:
- From any action or requirement of any examiner in the ex parte prosecution of an application, or in the ex parte or inter partes prosecution of a reexamination proceeding which is not subject to appeal to the Board of Patent Appeals and Interferences or to the court;
- 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
- To invoke the supervisory authority of the Director in appropriate circumstances. For petitions involving action of the Board of Patent Appeals and Interferences, see § 41.3 of this title. 37 C.F.R. § 1.181(a).
Five things are generally required for filing a petition to the PTO Director:
- The petition must be in writing. 37 C.F.R. § 1.2;
- The petition must have a statement of facts with points to be reviewed and the action requested. 37 C.F.R. § 1.181(b);
- The appropriate fee must accompany the petition. 37 C.F.R. § 1.181(d);
- The petition must be timely filed as required by 37 C.F.R. § 1.181(f) or as required by a specific statute or regulation; and
- The petition must comply with any specific requirements as provided in a statute, regulation, or USPTO policy. For more information, click here.
Different types of petitions are decided by different offices within the PTO as discussed in the PTO's Examination Manual. For example, petitions to revive an abandoned national, nonprovisional or provisional patent application are decided by the Office of the Deputy Commissioner for Patent Examination Policy. Other petition deciding bodies include the Technology Center Directors, Supervisory Patent Examiners, and Administrative Patent Judges.
Not all issues can be petitioned. The Director will not normally entertain petitions on matters that are appealable to the Patent Trial and Appeal Board (PTAB) and the PTAB will normally not hear questions that should be decided by the Director on petition.
Filing a petition with the PTO does not stay the period for replying to an examiner’s office action regarding an application, nor does it stay any other proceeding. Each petition and its respective application files are sent to the delegated office to decide the petitionAfter a decision has been made on a petition, the decision is returned to the primary examiner who acts on the decision as directed by the appropriate PTO deciding office.
So, in summary, if one is unhappy with a decision by the Patent Office Examiner and it is not one related to substantive law (e.g., not relating to whether the invention is a new one or whether the invention is adequately described) one can ask the Patent Office to correct its mistake and the Office will dutifully send your request to one of its internal bureaus to see if the Examiner has erred. One may rightfully ask in this situation if the deck is stacked against such a Petitioner given that the PTO is being asked to correct its own mistake. So what if the PTO refuses to do what the Petitioner requests? We'll address that situation in our next post.