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Petitioning the Director: Why? When?

June 11, 2019
Post by Gregory "Lars" Gunnerson

Typically, patent attorneys are privileged to work side by side with examiners who embrace the collaborative relationship that exists between patent applicants and the United States Patent and Trademark Office (USPTO). It is typical for examiners and patent attorneys to initially disagree on legal and/or technical issues which relate to the claims of a patent application. Thereafter, they will negotiate a compromise that eventually results in the issuance of a U.S. patent. However, examiners and patent attorneys will occasionally disagree on procedural issues as well. These disagreements on procedural issues can often cause significant delays during prosecution. Applicants pour a lot of intellectual and financial resources into pursuing patent protection and get caught in the crossfire.

In these situations, one of the extremely limited options patent attorneys have is to petition the Director of the USPTO. These petitions are then typically redirected to and reviewed by a number of different internal USPTO departments. However, not all issues can be petitioned. Some issues must be appealed to the Patent Trial and Appeal Board (PTAB).

Petitioning the Director is largely viewed among patent professionals to be not worth the hassle. However, writing these petitions is not as burdensome as these patent professionals may have you think. First, many of these petitions have no official government fee. Second, those patent professionals who are practiced at writing successful petitions can be very efficient at doing so.

Some of these same patent professionals ignore filing petitions as an option because the process of petitioning the Director can be confusing. Furthermore, they fear these petitions will anger examiners or because they think that these petitions will be pending for an extraordinarily long time. Instead, they opt to explain to examiners why the examiner has misinterpreted a rule to the examiner, rather than to a neutral third party.

Perhaps 10 or 20 years ago, these patent professionals would have been correct. However, the Office has recently put more pressure on examiners to require more information be included in the disclosure and to limit the number of claims for examination through restriction. For example, our attorneys have seen a dramatic increase in improper restriction requirements, objections to the drawings under 37 CFR 1.83(a), premature final Office actions, attempts to interpret structural language under 35 U.S.C. 112(f), and the like. If patent professionals continue to ignore petitioning the Director as a legitimate option, these practices will make their way into standard examination.

The Office provides statistics relating to petitions on the Patents Petitions Timeline webpage. Notably, as of 2019, the Office overturns restriction requirements 70% of the time and averages 67 days to issue decisions related to the same; the Office grants a petition to declare a final rejection premature 44% of the time and averages 70 days to issue decisions related to the same; and the Office reverses an examiner’s refusal to enter an amendment 40% of the time and averages 80 days to issue decisions related to the same.

Thus, if you believe your patent application is being held up at the Office for ministerial or administrative issues, please call our office at (515) 288-3667 and we can help you determine what options are available to you and help you pick a solution that best aligns with your goals.

Gregory "Lars" Gunnerson is a Patent Attorney in the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Lars directly via email at gregory.gunnerson@ipmvs.com.



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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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