Use Caution When Relying upon Guidance Provided by the USPTO’s Petition WebpageOriginally published on Petition.ai
Julie Burke, Ph.D.
Savvy patent practitioners know the USPTO’s petition process can lead to prosecution delays. Since filing a petition does not stop an applicant’s clock, late decided petitions are frequently dismissed as moot when applicants take steps to keep the applications from going abandoned.
One way to avoid petition decision delays is to file a second petition under 37 CFR 1.182 to request expedited review of the first petition.
In one place, the USPTO’s webpage provides a petition under 37 CFR 1.182 may be filed for all situations not specifically provided for in any other rule under Title 37 of the Code of Federal Regulations. (Emphasis added) A petition under 37 CFR 1.182 must be accompanied by a detailed statement that specifically identifies:
- the situation for which petitions is seeking relief;
- why petitioner believes that such relief is proper;
- what action the petitioner desires the Office to take on his/her behalf;
- any additional pertinent information and/or copies of any documentary evidence that supports petitioner's statement, and
- the petition fee under 37 CFR 1.17(f).
However, in another place, the USPTO petition webpage offers conflicting guidance. Below is the answer to one of the FAQs: Is there a way to expedite a decision on my petition? Petitions FAQs answers:
…The Office of Petitions may take into consideration a petition to expedite, filed under 37 CFR 1.182 requesting that consideration of an initial petition, filed prior to or simultaneously with the petition to be expedited, be expedited. A petition to expedite will not be considered for a petition requiring supervisory review or a petition requesting reconsideration of a petition decision…
This newly formulated procedural exception is not mentioned in 37 CFR 1.182 or in MPEP 1002. As explained by the IP community’s APA guru, David Boundy, the Supreme Court has reminded agencies that they can’t bind the public by guidance with less-than-regulation procedural formality. Creating exceptions to 37 CFR 1.182 in a webpage does not rise to the level of proper notice and comment.
Alarmingly, the types of petitions now apparently being excluded from expedited review are the very ones in which most need prompt consideration.
Practitioners should note the Office of Petitions is currently taking on average 214 days to decide petitions to invoke supervisory review for non-patent examining related matters, 94 days to decide petitions requesting review of a TC Director’s petition decision under 37 CFR 1.181, and 49 days for TC Directors to decide petitions to withdraw prematureness of final rejection.