1000

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1000 Matters Submitted to Commis- sioner and Group Directors

1001
Statutory Authority of Commissioner

1001.01
Modes of Exercising Authority

1002
Petitions to the Commissioner

1002.01

Procedure

1002.02

Petitionable Subjects

1003
Matters
Submitted

to
Commissioner
Through the Group Directors

1004
Matters Submitted to Group Directors

## 1001 Statutory Authority of Commis- sioner

35 U.S.C. 6. Duties of Commissioner. The Commis-
sioner, under the direction of the Secretary of Com-
merce, shall superintend or perform all duties required
by law respecting the granting and issuing of patents
and the registration of trademarks; and he shall have
charge of property belonging to the Patent Office. He
may, subject to the approval of the Secretary of Com-
merce, establish regulations, not inconsistent with law,
for the conduct of proceedings in the Patent Office.

## 1001.01 Modes of Exercising Author- ity [R-21]

The Commissioner's authority to review and
supervise the work of the Office is exercised by
the promulgation of the Rules of Practice; is-
suance of Orders, Notices and Memoranda stat-
ing Office policies and modes for effectuating
these policies; decisions on petitions by appli-
cants, and by the designation of particular
cases which must be submitted to the Commis-
sioner or other officials authorized by the Com-
missioner. The present chapter deals with the
latter two items.

The Commissioner's authority relating to de-
cisions on petitions and to the supervision of
the work of the Examining Corps has, in in-
stances not requiring the personal decision of
the Commissioner, been delegated to the Group
Directors, to the Solicitor and to the Law
Examiners.

## 1002 Petitions to the Commissioner [R-21]

Rule 181. Petition to the Commissioner. (a) Peti-
tion may be taken to the Commissioner (1) from any

action or requirement of any examiner in the ex parte
prosecution of an application which is not subject to
appeal to the Board of Appeals 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 Commissioner: and (3) to invoke the super-
visory authority of the Commissioner in appropriate
circumstances.

(h) Any such petition must contain a statement of
the facts involved and the point or points to be re-
viewed and the action requested. Briefs or memo-
randa, 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 (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, it may be required that there have
been a proper request for reconsideration (rule 111)
and a repeated action by the examiner. The examiner
may be directed by the Commissioner to furnish a
written statement, within a specified time, setting forth
the reasons for his decision upon the matters avered
in the petition, supplying a copy thereof to the peti-
tioner.

(d) No fee is required for a petition to the Commis-
sioner except in the case of a petition to revive an
abandoned application (rule 137) or for the delayed
payment of a final fee ( rule 317).

(e) Oral hearings will not be granted except when
considered necessary by the Commissioner.

(f) Except as otherwise provided in these rules,
any such petition not filed within 60 days from the
action complained of. may be dismissed as untimely.
The mere filing of a petition will not stay the period
for reply to an examiner's action which may be run-
ning against an application, nor act as a stay of other
proceedings.

(g) Determination of petitions of various kinds may
be delegated by the Commissioner to the Supervisory
Examiners or to the Solicitor and Law Examiners.

Rule 183. Suspension of rules. In an extraordinary
situation, when justice requires, any requirement of
these rules which is not a requirement of the statutes
may be suspended or waived by the Commissioner in
person on petition of the interested party, subject to
such other requirements as may be imposed.

Petitions on appealable matters ordinarily
are not entertained. See section 1201.

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The mere filing of a petition will not stay the
period for replying to an Examiner's action
which may be running against an application,
nor act as a stay of other proceedings (Rule
181(f)). For example, if a petition to vacate
a final rejection as premature is filed within
sixty days from the date of the final rejection,
the period for response to the final rejection is
not extended even if the petition is not reached
for decision within that period. However, if the
petition is granted and the applicant has filed
an otherwise full response to the rejection
within the period for response, the case is not
abandoned.

Rule 181(f) now provides that any petition
under that rule which is not filed "within 60 days
from the action complained of" may be dis-
missed as untimely. Often, the "action com-
plained of", for example, 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 three months period for response.
Under such circumstances, if applicant requests
reconsideration, under Rule 111(b), of the re-
quirement for a new drawing, the Examiner's
action on this request, if adverse, establishes the
beginning of the 60 day period for filing the
petition. The petition must be filed within this
period even though the period for response to
the rejection of the claims may extend beyond
the 60 day period.

### 1002.01 Procedure [R-21]

Petitions, together with the respective appli-
cation files, are sent to the Office of the Com-
missioner or other official having the delegated
authority to decide the petition. The petition
may be referred to the Examiner for a formal
statement under Rule 181 (c) or for an informal
memorandum.

Where a formal statement under Rule 181 (c)
is made, a copy thereof is mailed to the peti-
tioner by the Examiner unless the latter is
otherwise directed, and the file and petition,
accompanied by the original copy of his state-
ment, are returned to the official handling the
petition. If an informal memorandum is re-
quested, no copy thereof is mailed to the peti-
tioner by the Examiner. After the decision
has been rendered, the decision is entered on the
"Contents" of the file wrapper which is then re-
turned to the Primary Examiner, who will act
in accordance with the decision.

### 1002.02 Petitionable Subjects [R-21]

The following is a list of the most common
petitions, together with a reference to the sec-

tions of this Manual where they are more
fully treated:

1\. To make an application special on the
ground of prospective manufacture or infringe-
ment or where applicant, for lack of a patent
or an Office action indicating patentable sub-
ject matter, is unable to interest capital. Section
708.02.

2\. To revive an abandoned application. Sec-
tions 711.03(c) and 711.03(d).

3\. For filing date. Sections 409.03 and 506.

4\. To accept late issue fee. Section 712.

5\. Second or subsequent extensions of time
for filing an appeal brief. Section 1206.

#### A. Referred to Group Directors

6\. From any ex parte action or requirement
by the Examiner which is not subject to ap-
peal, as, for example,

(a) Prematureness of final rejection. Section
706.07 (c).

(b) Refusal to enter an amendment. Rule
127 and Section 714.19.

(c) Holding of abandonment. Sections
711.03 (c) and 711.03(d).

7\. To make an application special on the
ground of applicant's age or state of health or
to make special a division, continuation or con-
tinuation-in-part of an earlier application. Sec-
tion 708.02.

8\. To amend after decision by Board of Ap-
peals. Rule 198 and Section 1214.07.

9\. From a final decision of the Examiner
requiring restriction of an application. See
Rule 144 and section 818.03 (c).

B. Referred to Solicitor and Law Examiners

10\. For access to an application. Sections 103
and 104.

11\. For certificate of correction. Sections
1402 to 1402.02.

##### 1003 Matters Submitted to Commis- sioner Through the Group Direc- tors [R-21]

The following matters require the approval
of the Commissioner. For this purpose, they
should be transmitted by the Examiner to his
Group Director.

1\. Where a patent claim is copied outside
the time limit set, its entry requires the ap-
proval of the Commissioner. See section 1101.02
(f).

2\. Amendment copying patent claims with-
out identifying patent. See section 1101.02(d).

3\. Return of papers containing discourteous
remarks. See section 714.25.

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4\. Return of papers other than priority pa-
pers entered on Contents of File Wrapper.
See section 717.01.

5\. Requests for authorization to reopen prose-
cution of an application after a Court decision.
See section 1214.07.

## 1004 Matters Submitted to Group Di- rectors [R-21]

The following is a list of matters which re-
quire the approval of the appropriate Group
Director, together with a reference to the sec-
tion of this Manual where they are more fully
treated.

1\. Request for withdrawal of an allowed ap-
plication from issue. Sections 1308 to 1308.02

2\. Requests for authorization to reopen prose-
cution of an application after decision by the
Board of Appeals. Section 1214.07.

3\. Return of certain priority papers. Section
201.14 (c).

4\. Request for return of original oath. Sec-
tion 604.04 (a).

5\. Actions which hold unpatentable claims
copied from a patent for interference purposes
where the grounds relied upon are equally ap-
plicable to the patentee. Section 1101.02 (f).

6\. Divisional reissue applications filed. Sec-
tion 1401.10(a).

7\. Interferences between applications neither
of which is in condition for allowance. Section
1101.01 (c).

8\. Second or subsequent attempts at conver-
sion of an application (addition or removal of
an inventor under Rule 45), or simultaneous
addition and removal of inventors. Section
201.03.

9\. Applications filed without drawings
where there is a doubt as to the need for draw-
ings before granting a filing date. Section
608.02.

10\. Fourth or subsequent complete actions on
the merits which do not close the prosecution.

11\. Actions on amendments after allowance
(Rule 312) except the correction of mere formal
matters under Order No. 3311. Sections 714.16
to 714.16(e), and 1101.02 (g).

12\. Second or subsequent extensions of a set
shortened statutory period under Rule 136 (b).
Section 710.02(e).

13\. Second or subsequent suspensions of ac-
tion under Rule 103. Section 709.

14\. Certain rejections on double patenting of
divisional (or parent) case when restriction
or election of species has previously been re-
quired. Section 804.04.

15\. Letters to an applicant of an allowed ap-
plication informing him of a proposal to
request withdrawal of said application from
issue for the purpose of rejecting a claim or
claims as fully met by, or obviously unpatent-
able over a new reference. Section 1308.01.

16\. Amendments presented after decision by
the Board of Appeals as to which the Pri-
mary Examiner recommends entry as placing
the application in condition for allowance.
Section 1214.07.

17\. Letters requesting jurisdiction of appli-
cations involved in interference. Section 1101.01
(0).

18\. Petitions under Rule 212 for concurrent
ex parte and inter partes prosecution. Section
1103\.

19\. Interferences including "phantom"
counts. Section 1101.02 (Item CII).

20\. Request for patentability report. Section
705.01 (e).

21\. Petitions under Special Examining Pro-
cedure for certain new applications-accelerated
examination. Section 708.02.

22\. New ground of rejection or objection or
new reference cited in Examiner's Answer on
appeal. Prior approval of the Group Director
must be obtained before the Answer is written
and the file copy of the Answer must be stamped
"approved" by the Group Director if it meets
with his approval. Section 1208.01.

23\. Letters to an applicant suggesting claims
for purposes of interference, the adoption of
which by the applicant would result in the
withdrawal of an application from issue. Sec-
tion 1101.01 (o).

24\. Request for Interview after the applica-
tion has been sent to issue. Section 713.10.

25\. Defensive publication requests where the
subject matter is not suitable for publication.
Section 711.06.

26\. Examiner's Answers containing a new
interpretation of law. Section 1208.

27\. Letters to an applicant indicating a de-
fect in his appeal brief. Section 1206.

The Group Director should also be consulted
in situations such as the one spelled out in 1208 .-
01, where it must be decided whether to fully
reopen the ex parte prosecution after appeal
or to proceed by introducing a new ground of
rejection in the Examiner's Answer. Such
consultation would ordinarily be confined to
questions of policy as to whether the best in-
terests of the applicant as well as the Office
would be served by reopening the prosecution
or extending the term to reply to the Answer.

All unusual questions of practice may be re-
ferred to the Group Directors.

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