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# Chapter 1000 Petitions: Cases Submitted to Commissioner and Supervisory Examiners

1001
Statutory Authority of Commissioner

1001.01
Modes of Exercising Authority

1002
Petitions

1002.01
Procedure

1002.02
Petitionable Subjects

1003
Cases Submitted to Commissioner

1004
Cases Submitted to Supervisory Examiners

## 1001 Statutory Authority of Commis- sioner

35 U. S. C. 6; R. S. 481, 483. Duties of commissioner.
The Commissioner of Patents, under the direction of
the Secretary of Commerce, shall superintend or per-
form all duties respecting the granting and issuing of
patents directed by law ; and he shall have charge of
all books, records, papers, models, machines, and other
things belonging to the Patent Office. He may, subject
to the approval of the Secretary of Commerce, from
time to time establish regulations, not inconsistent
with law, for the conduct of proceedings in the Patent
Office. (R. S. secs. 481, 483 ; Feb. 14, 1903, ch. 552, sec.
12, 32 Stat. 830.)

The statutes quoted above state the authority
of the Commissioner of Patents to review and
supervise all aspects of the Examiner's work
in the Office.

## 1001.01 Modes of Exercising Authority

The Commissioner's authority to review and
supervise the work of the Office is exercised by
the promulgation of the Rules of Practice; issu-
ance of Orders, Notices and Memoranda stating
Office policies and modes for effectuating these
policies; decisions on petitions by applicants,
and by the designation of particular questions
which must be submitted to the Commissioner or
other officials authorized by the Commissioner.
The present section 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 instances
not requiring the personal decision of the Com-
missioner, been delegated to the Supervisory
Examiners, and to the Solicitor and Law Ex-
aminers.

## 1002 Petitions

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.

(b) Any such petition must contain a statement of
the facts involved and the point or points to be reviewed
and the action requested. Briefs or memoranda, 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 averred
in the petition, supplying a copy thereof to the
petitioner.

(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) 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.

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

[Old Rule 1421

Rule 188 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.

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## 1002.01

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A petition may be taken to the Commissioner
on any matter which the petitioner believes war-
rants his consideration. However, petitions on
appealable matters ordinarily are not enter-
tained.

The determination of petitions is, in the vast
majority of cases, delegated by the Commis-
sioner to the Supervisory Examiners or to the
Solicitor and Law Examiners (Rule 181 (g)).

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 near the
end of the statutory period, the statutory 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 stat-
utory period, the case is not abandoned.

### 1002.01 Procedure

Petitions, together with the respective appli-
cation files, are sent by the Docket Branch to the
Office of the Commissioner or other official hav-
ing the delegated authority to decide the peti-
tion. The petition may be referred to the
Examiner for a formal statement under Rule
181 (e) or for an informal memorandum.

Where a statement under Rule 181 (c) is
made, a copy thereof is mailed to the petitioner
by the Examiner unless the latter is otherwise
directed, and the file and petition, accompanied
by the original copy of his statement, are re-
turned to the official handling the petition.
After the decision has been rendered, the file
with the petition and decision is sent to the
Docket Branch, where the decision is recorded,
the file then being returned to the Primary
Examiner, who will act in accordance with the
decision.

### 1002.02 Petitionable Subjects

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 :

A. REFERRED TO SUPERVISORY EXAMINERS

1\. From any ex parte action taken by the
Examiner which is not subject to appeal as,
for example,

(a) prematureness of final rejection

(b) refusal to enter an amendment (see Rule
127)

(c) holding of abandonment (See 711.03 (c)
and 711.03 (d) )

2\. To make special a division, continuation or
continuation-in-part of an earlier application
(see 708.02)

3\. To amend after decision by Board of Ap-
peals (See Rule 198, 1214.07)

B. REFERRED TO SOLICITOR AND LAW EXAM-
INERS

4\. To make an application special on the
ground of prospective manufacture or infringe-
ment (See 708.02)

5\. To revive an abandoned application (See
711.03 (c) and 711.03 (d) )

6\. For access to an application (See 103 and
104\)

7\. For certificate of correction (See 1402 to
1402.02)

8\. For filing date (See 506)

9\. To accept late final fee (See 712)

10\. To convert to or from fee-exempt status
(See 607.01, 607.01 (b) and 607.01 (c))

1003 Cases Submitted to Commis-
sioner

The following is a list of commonly occur-
ring matters which must be submitted by the
Examiner to the Commissioner :

1\. Amendment after allowance (See 714.16 to
714.16 (e))

2\. Where a patent claim is copied outside the
time limit set, its entry requires the approval of
the Commissioner (See Notice of September 27,
1933, revised; 1101.02 (f))

3\. Amendment copying patent claims without
identifying patent (Rule 205)

4\. Action on amendment copying patent
claims in case in issue (See 1101.02 (g))

5\. Letter suggesting claims for interference
in an application in issue (See 1101.01 (o))

6\. Request for jurisdiction of application in
interference (See 1101.01 (o))

7\. Examiner requests withdrawal of case
from issue (See 1308 to 1308.03)

8\. Application for reissue filed while patent
is in interference (See 1111.08)

9\. Return of papers containing discourteous
remarks (See 714.25)

10\. Return of paper entered on Contents of
File Wrapper (See 717.01)

## 1004 Cases Submitted to Supervisory Examiners

Actions which it is proposed to take in the follow-
ing cases are required to be submitted to the Super-
visory Examiners for review:

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

2\. Actions subsequent to the closing of the prose-
cution before the examiner which would reopen or

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afford grounds for reopening the prosecution. (See
706.07 (e) and 1208.01.)

3\. Actions in which a shortened statutory period
is set. Order No. 3494 requires the Commissioner's
approval but authority to pass on these cases has
been delegated to the Supervisory Examiners. (See
710.02 to 710.02 (b).) (Notice of August 6, 1942,
Revised.)

In addition to the actions specified in the
above Notice, the following actions are also re-
quired to be submitted to the Supervisory
Examiners :

4\. Public Law 690 cases in which the priority
request is granted or previously allowed priority
benefits are withdrawn (See 201.16 (u))

5\. Second or subsequent extension of a set
shortened statutory period under Rule 136 (b)
(See 710.02 (e) )

6\. Second or subsequent suspension of action
under Rule 103 (See 709)

7\. Divisional reissue applications filed (See
Rule 177)

8\. Actions which state that a new application
obviously fails to disclose an invention with the
clarity required by sec. 4888 R. S., 35 U. S. C. 33
(See 702.01)

9\. Actions pertaining to Publication of
Abstracts (See 711.06 (b))

10\. Actions taken by the Primary Examiner
under Rule 237 (a) in an interference involving
a patent as set forth in the Notice of March
15, 1950. See 1101.02 (f)

11\. Letters to an applicant of an allowed
application informing him of a proposal of
requesting 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. See Notice of March
15, 1950 in 1308.01.

In addition to the above, all unusual questions
of practice may be referred to the Supervisory
Examiners.

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