1000

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1000 Petitions: Matters Submitted to Commissioner and Supervisory Examiner

1001
Statutory Authority of Commissioner

1001.01
Modes of Exercising Authority

1002
Petitions

1002.01
Procedure

1002.02
Petitionable Subjects

1003
Matters Submitted to Commissioner Through
Supervisory Examiners

1004
Matters Submitted to Executive Examiner
Through Supervisor Examiners

1005
Matters Submitted to Supervisory Examiners

## 1001 Statutory Authority of Commis- sioner

35 U. S. O. 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 trade-marks ; 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.

The statute quoted above states 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 cases which
must be submitted to the Commissioner or other
officials authorized by the Commissioner. 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 instances
not requiring the personal decision of the Com-
missioner, been delegated to the Executive Ex-
aminer, to the Supervisory Examiners, to the.
Solicitor and to Law Examiners.

## 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.

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

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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.

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.

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 (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 other-
wise directed, and the file and petition, accom-
panied by the original copy of his statement,
are returned to the official handling the petition.
If the informal memorandum is requested, no
copy thereof is mailed to the petitioner by the
Examiner. After the decision has been ren-
dered, the file with the petition and decision is
sent to the Docket Branch, where the decision
is entered on the "Contents" of the file wrapper
which is then returned to the Primary Exam-
iner, 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 or requirement
by the Examiner which is not subject to appeal
as, for example,

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

(b) Refusal to enter an amendment. See
Rule 127.

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

2\. 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.
See 708.02.

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

4\. From a final decision of the Examiner re-
quiring restriction of an application. See
Rule 144, 818.03 (c).

B. REFERRED TO SOLICITOR AND LAW EXAMINERS

5\. 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 subject
matter, is unable to interest capital. See 708.02.

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

7\. For access to an application. See 103 and
104\.

8\. For certificate of correction. See 1402 to
1402.02.

9\. For filing date. See 409.03 and 506.

10\. To accept late final fee. See 712.

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

### 1003 Matters Submitted to Commis- sioner Through Supervisory Examiners

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

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

2\. Amendment copying patent claims with-
out identifying patent. Rule 205, 1101.02 (d).

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

4\. Return of papers other than priority
papers entered on Contents of File Wrapper.
See 717.01 and 1004.

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5\. Requests by Primary Examiners for au-
thorization to reopen prosecution of an applica-
tion after a Court decision. Rule 198, 1214.07.

1004 Matters Submitted to Director,
Patent Examining Operation,
Through Supervisory Examiners

The following is a list of matters which re-
quire the approval of the Director. For this
purpose, they should be transmitted by the Ex-
aminer to the Supervisory Examiner.

1\. Request for withdrawal of an allowed ap-
plication from issue. See 1308 to 1308.03.

2\. Requests by Primary Examiners for au-
thorization to reopen prosecution of an appli-
cation after decision by the Board of Appeals.
Rule 198. See 1214.07.

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

## 1005 Matters Submitted to Supervi- sory Examiners

In addition to the submission of the proposed
actions listed in 1003 and 1004, all unusual ques-
tions of practice may be referred to the Super-
visory Examiners. In the following specific
cases, the proposed action must be submitted to
the Supervisory 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
prosecution before the Examiner which would
reopen or afford grounds for reopening the
prosecution. See 706.07 (e) and 1208.01.

3\. Actions in which a shortened statutory
period is set. See 710.02 to 710.02 (b).

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

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. See 1101.02 (f).

6\. Public Law 619 and Public Law 690 cases
in which the priority request is granted or pre-
viously allowed priority benefits are with-
drawn. See 201.16.

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

8\. Second or subsequent suspensions of action
under Rule 103. See 709.

9\. Divisional reissue applications filed. See
Rule 177.

10\. Actions which state that a new applica-
tion obviously fails to disclose an invention with
the clarity required by 35 U. S. C. 112. See
702.01.

11\. Letters to an applicant of an allowed ap-
plication informing him of a proposal of re-
questing 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 1308.01.

12\. Amendments presented after decision by
the Board of Appeals as to which the Primary
Examiner recommends entry as placing the ap-
plication in condition for allowance. See
1214.07.

13\. Letters to an applicant suggesting claims
for purposes of interference, the adoption of
which by the applicant would result in the with-
drawal of an application from issue. See
1101.01 (o).

14\. Second or subsequent attempts at con-
version of an application (addition or removal
of an inventor under Rule 45), or simultaneous
addition and removal of inventors. See 201.03.
15\. Letters requesting jurisdiction of applica-
tions involved in interference, see 1101.01 (o).

16\. Petitions under Rule 212 for concurrent
ex parte and inter partes prosecution. See
1103\.

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