USPTO Quietly Changes its Policy du Jour via the Petition WebpageOriginally published on Petition.ai
Julie Burke, Ph.D.
The USPTO used their petitions webpage to quietly change their policy du jour on whether a petition filed under 37 CFR 1.182 could be used to expedite certain types of petitions. This change may have been prompted by our September 18, 2023 article urging IP practitioners to use caution when relying upon guidance provided by the USPTO’s petition webpage.
Here's how the answer to the Petitions FAQ “Is there any way to expedite a decision on my petition?” has been changed since our article:
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 expedite, be expedited. A petition to expedite
will not be consideredfor a petition requiring supervisory review or a petition requesting reconsideration of a petition decision .
This quietly made change occurred without notice or comment, does not reflect language in MPEP Chapter 1000, and is not consistent with the USPTO petition timeline pendency data. According to the USPTO, for the 12-months ending on August 1, 2023, the average pendency for petitions likely requiring supervisory review or requesting reconsideration was:
- 139 days for matters not specially provided for
- 157 days to invoke supervisory review in a national stage application
- 214 days to invoke supervisory authority for non-patent examining matters
Is the USPTO handling petitions requiring supervisory review or a requesting reconsideration in an expedited manner?
To be sure, a quick search on Petition.ai readily identified petitions for supervisory review, in which substantive examination issues were resolved, via notice of allowance, before the TC Group Directors addressed the petitionable procedural concerns:
- On October 3, 2023, the USPTO dismissed a September 11, 2023 petition seeking supervisory review to withdraw an office action as moot in view of the September 28, 2023 Notice of Allowance. (pendency of 22 days)
- On September 22, 2023, the USPTO dismissed an August 28, 2023 petition requesting the examiner consider the IDS as moot in view of the August 31, 2023 Notice of Allowance. (pendency of 30 days)
Yet other petitions requesting supervisory review or reconsideration of a petition decision have not been handled in an expedited manner:
- 131-day pendency: A petition filed January 5, 2023 was not promptly reviewed. Instead, the examiner regained jurisdiction and issued a final rejection. As we have reported, the USPTO can run down the clock after final, necessitating applicants to file a Request for Continued Examination, as was the case here. On May 16, 2023, the petition was denied.
- 185-day pendency: A petition filed September 23, 2022, under 37 CFR 1.181 requesting the Director exercise supervisory authority and review the petition decision of July 22, 2022 was denied March 27, 2023.
- 376-day pendency: A petition filed July 22, 2022 under 37 CFR 1.181 to invoke supervisory authority of the Director was dismissed August 2, 2023.
- 614-day pendency: A petition filed January 6, 2022, requesting entry of an amendment after final was dismissed September 13, 2023.
These examples indicate that the USPTO’s processing these types of petitions is not in fact uniformly expedited. It is not clear that a petition filed under 37 CFR 1.182—which must be accompanied by the $420 undiscounted fee—would itself be promptly processed by the USPTO. At this time, patent practitioners should be wary to accept the USPTO’s assertion that petitions seeking supervisory review or petitions seeking reconsideration of a prior decision are in fact being expedited.
As we have reported, applicants can improve their chances of having any kind of petition promptly decided by filing the petition with the correct document code, by monitoring Patent Center and by following up with Office of Petitions or the Technology Center Quality Assurance Specialists to ensure their petition is promptly entered and forwarded to the appropriate Deciding Official. Lastly, applicants do have a right to file a petition under 37 CFR 1.182, for any matters not specifically provided for, regardless of the latest USPTO’s webpage-based policy du jour.