Patent Petitions

Patent Petitions

Our firm has an active patent petitions practice, providing skilled petition work for matters before the U.S. Patent and Trademark Office. We assist clients seeking equitable remedies for procedural errors and defects. Several former USPTO examiners are among the firm's patent attorneys and agents, including a former Director of the USPTO Office of Petitions.

Petitions provide a formal mechanism for correcting procedural improprieties, not subject to appeal, that may occur in the course of prosecution. The scope of petitions is very broad. Petitions may be filed 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. However, no petition may be taken from any examiner action that is subject to appeal to the Board of Patent Appeals and Interferences or the court. A petition may be filed in cases in which a statute or rules specify that the matter is to be determined directly by or reviewed by the Office, and in appropriate circumstances to invoke the supervisory authority of the Director of the USPTO.

Petitions may also be filed in situations not specifically provided for in the regulations and will be decided in accordance with the merits of each situation. In an "extraordinary situation, when justice requires," the Director may suspend or waive any non-statutory requirement of the rules required to grant the petition, but may not waive any requirement imposed by statute.

A petition must meet certain requirements:

  • It must be in writing.
  • It must contain a statement of facts involved, the point(s) to be reviewed, and the action requested.
  • It must be accompanied by a fee, if required.
  • It must be timely filed. Petitions not filed within 2 months of the action or notice prompting the petition may be dismissed as untimely. Filing of the petition will not stay any period for reply.
  • It must comply with required statutory, regulatory, and policy requirements.

Specific types of petitions include:

  • Petitions to permit filing when an inventor refuses or cannot be reached to sign the oath or declaration
  • Petitions to correct inventorship in applications
  • Petitions to obtain or correct a filing date
  • Petitions to revive abandoned applications or lapsed patents
  • Petitions to correct of the Patent Term Adjustment
  • Petitions to withdraw the holding of abandonment
  • Petitions to expunge papers
  • Petitions to withdraw an allowed application from issue, defer issuance, or recognize a priority claim
  • Petitions for access
  • Petitions seeking to abandon an application to avoid publication of the application
  • Petitions relating to maintenance fees
  • Petitions relating to reexamination practice

Our firm understands the intricacies of petitions practice and has the depth of experience to assist our clients in navigating this process. Contact us for additional information or to schedule a consultation.