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[patentatt]

Does any examiner or practitioner here have experience with Rule 1.181 petitions to the director to:

1. have a restriction requirement withdrawn
2. have an objection withdrawn
3. have finality of a rejection withdrawn

or correct any other procedural error by the examiner?

What was your experience?  How long did it take the petition to be decided?  Was it only decided after the statutory due date for response?

Any feedback is appreciated.

[Robert K S]

Restriction abuse has gotten so bad that we now petition all but the most defensible restriction.  The first petition decision will be written by someone low on the totem pole and will look like a typical office action--conclusory reasoning, no understanding of the law (or Patent Office procedure), but it's a first step toward a renewed petition before the TC Director, who hopefully will take a better look.  If still unsatisfied the petition can be renewed once more before the Office of Petitions.  After that point, I think it's straight to District Court, unless there's some way to get the big man himself to look at a restriction requirement/objection petition.

I have only had the occasional bottom-level petition decision reversed in my favor, and I think (but can't know for sure that) it's usually when the petition reviewer calls up the examiner and says, "Hey, would you be willing to examine these other claims so I don't have to write this petition decision?"

Petitions are usually decided within a couple of months, but in one case I waited over a year for a new matter petition decision.  In that time the appeal brief was already pending, but the examiner and his supervisor wouldn't allow the answer brief to issue or the appeal to be docketed with the Board until the petition decision was rendered, even though the petitionable issues and the appealable issues were separable.  Thanks, guys.  Just adding to that pendancy average.

Petitions are free, so petition early, petition often.

[patentatt]

Restriction abuse has gotten so bad that we now petition all but the most defensible restriction.  The first petition decision will be written by someone low on the totem pole and will look like a typical office action--conclusory reasoning, no understanding of the law (or Patent Office procedure), but it's a first step toward a renewed petition before the TC Director, who hopefully will take a better look.

Do you ever petition things other than RRequirements?

Can you send me some examples, preferably a series of petition-not-granted -> renewed petition -> renewed petition, etc.?

Do you have to designate the second petition as a petition under 1.181(a)(3) ("To invoke the supervisory authority of the Director in appropriate circumstances.")?  I never quite understood how to label a petition-based-on-a-denied-petition?  And I never understood the distinction between 1.181(a)(1) and 1.181(3)?  Or what the heck someone would use a 1.182 petition for that wouldn't be covered by 1.181 - esp. considering that 1.181 but 1.182 petitions are free.

If still unsatisfied the petition can be renewed once more before the Office of Petitions.  After that point, I think it's straight to District Court, unless there's some way to get the big man himself to look at a restriction requirement/objection petition.

What is the Office of Petitions?  Does it have a web page?  Who heads it?  Is it part of the Office of the General Counsel or the Office of General Law?

I thought that the TC Director, or his/her delegate, decided 1.181 petitions?  This is another issue that fascinates and frustrates me.  Who the heck even decides these things?

If still unsatisfied the petition can be renewed once more before the Office of Petitions.  After that point, I think it's straight to District Court, unless there's some way to get the big man himself to look at a restriction requirement/objection petition.

You could contact the Office of the General Counsel/Law.

I have only had the occasional bottom-level petition decision reversed in my favor, and I think (but can't know for sure that) it's usually when the petition reviewer calls up the examiner and says, "Hey, would you be willing to examine these other claims so I don't have to write this petition decision?"

When you write "bottom-level" - do you mean that you have greater success at higher-than-bottom levels?  Have you considered filing a 1.183 petition to suspend the rules until your petition is resolved at the highest level (suffering PTA losses in the meanwhile)?

Petitions are usually decided within a couple of months, but in one case I waited over a year for a new matter petition decision.

That's outrageous.  This is the kind of data that I'm looking for.  I'm planning on filing a Freedom of Information Act Request.

In that time the appeal brief was already pending, but the examiner and his supervisor wouldn't allow the answer brief to issue or the appeal to be docketed with the Board until the petition decision was rendered, even though the petitionable issues and the appealable issues were separable.  Thanks, guys.  Just adding to that pendancy average.

Not to mention PTA for that patent (I would check to make sure that the Office is compensating you for the time that the examiners kept the application in appeal limbo before docketing at the BPAI).

Petitions are free, so petition early, petition often.

Agree 100%.

[Robert K S]

I have to amend what I said in my last post.  My new matter petition decision delay wasn't "over a year" but instead about half a month shy of a year.  (They took all that time and they still couldn't get it right!)

Do you ever petition things other than RRequirements?

Today I'm filing a petition over an objection for an informality in the claims not covered in MPEP 608.01(m) or 37 CFR 1.75(e), and that has no other basis in law.  I wouldn't do it if the Office action in which the objection was set forth didn't also fail to follow the law in dozens of other different ways, but once its clear that the Office isn't interested in following the law--or even understanding the law--it creates some incentive to petition over otherwise minor issues.  Give them an inch, etc.  The government has no right to tell applicants how to write their claims under the pretext of informality objections.

Can you send me some examples, preferably a series of petition-not-granted -> renewed petition -> renewed petition, etc.?

My cases are under non-publication but I can speak in general terms.  In a first petition, titled PETITION FOR REVIEW OF NEW MATTER OBJECTION, the cover sheet noted that "This communication is being filed pursuant to 37 C.F.R. § 1.181(a)(1) in response to a new matter objection issued with a final rejection mailed [date]..."  Watch for strict 2-month deadlines under Rule 181(f) but note that restriction requirements may be petitioned later per Rule 144 ("Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal").  The petition decision will note either that the petition has been "denied" or "dismissed" (there appears to be some fine distinction between the two when the petition is decided by the Office of the Deputy Commissioner for Patent Examination Policy, the BPAI's Chief Administrative Patent Judge, the Administrative Patent Judges, the BPAI itself, and the USPTO Deputy Director, see MPEP 1002.02, but these instances are probably very, very rare).  A renewed petition, filed within another strict 2-month deadline of the mail date of the first petition decision, will be titled RENEWED PETITION UNDER 37 C.F.R. 1.181 and will note on the cover page that "This communication is being filed pursuant to 37 C.F.R. § 1.181(a)(1) in response to the petition decision having mail date [date], which was a denial of the Applicants' [date] petition for reconsideration of a new matter objection issued with a final rejection mailed [date] in the above-captioned application."

Do you have to designate the second petition as a petition under 1.181(a)(3)

No, you shouldn't need to invoke (a)(3) where (a)(1) will do.

Or [why] the heck someone would use a 1.182 petition for that wouldn't be covered by 1.181 - esp. considering that 1.181 but 1.182 petitions are free.

I'm aware of a case where applicants in an inter partes reexam petitioned under 182 to have amendments entered after an "action closing prosecution," the reexam equivalent of a "final rejection" of all claims, see 95/000,313, but it seems that the PTO earlier denied a 182 petition in similar circumstances, see 90/008,143.  One PTO training slideshow, found by Googling, indicates that in the context of reexamination, if prior art is cited to the PTO (as in an IDS) after Notice of Intent to Issue Certificate (NIRC), the patent owner must submit a 37 CFR 1.182 petition, including a factual accounting providing a sufficient explanation of why the information could not have been submitted earlier, and an explanation of relevance of the information submitted with respect to the claimed invention.

What is the Office of Petitions?  Does it have a web page?  Who heads it?  Is it part of the Office of the General Counsel or the Office of General Law?

GIYF, but according to the web site, the Office of Petitions operates under the Associate Commissioner of Patent Examination Policy (ACPEP).  I would recommend you call up someone in the Office of Petitions if you're unclear about internal policy regarding petitions (which isn't well documented in the MPEP or otherwise).  In my experience, he or she will be happy to talk you through the procedure.

I thought that the TC Director, or his/her delegate, decided 1.181 petitions?

Yes, first the delegate, then upon a renewed petition that so specifies, the TC director.  You also have the option of bypassing the TC Director and going straight to the Office of Petitions, but why pass up a chance at having a petition granted?

Have you considered filing a 1.183 petition to suspend the rules until your petition is resolved at the highest level (suffering PTA losses in the meanwhile)?

Under what circumstances would that be a good idea?  Are you talking about suspending deadlines?  Why would I ever want to let the wheels stop grinding?  Onward, ho.

I'm planning on filing a Freedom of Information Act Request.

Let me know how I can support this.

[Robert K S]

Note also that what a TC Director does with a renewed petition is called a "reconsideration" but what the Office of Petitions does with a renewed petition is called a "review."

[Robert K S]

Here's one other interesting reason for a 182, straight from the MPEP.  Changing the order of inventors!

http://www.uspto.gov/web/offices/pac/mpep/documents/0600_605_04_f.htm

[patentatt]

Today I'm filing a petition over an objection for an informality in the claims not covered in MPEP 608.01(m) or 37 CFR 1.75(e), and that has no other basis in law.  I wouldn't do it if the Office action in which the objection was set forth didn't also fail to follow the law in dozens of other different ways, but once its clear that the Office isn't interested in following the law--or even understanding the law--it creates some incentive to petition over otherwise minor issues.  Give them an inch, etc.  The government has no right to tell applicants how to write their claims under the pretext of informality objections.

I usually cite from MPEP 2173.02 to get objections withdrawn: "Examiners are encouraged to suggest claim language to applicants to improve the clarity or precision of the language used, but should not reject claims or insist on their own preferences if other modes of expression selected by applicants satisfy the statutory requirement."

The passage basically states that the examiner has no power to maintain an objection that wouldn't amount to a rejection.

My cases are under non-publication but I can speak in general terms.  In a first petition, titled PETITION FOR REVIEW OF NEW MATTER OBJECTION, the cover sheet noted that "This communication is being filed pursuant to 37 C.F.R. § 1.181(a)(1) in response to a new matter objection issued with a final rejection mailed [date]..."  Watch for strict 2-month deadlines under Rule 181(f) but note that restriction requirements may be petitioned later per Rule 144 ("Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal").  The petition decision will note either that the petition has been "denied" or "dismissed" (there appears to be some fine distinction between the two when the petition is decided by the Office of the Deputy Commissioner for Patent Examination Policy, the BPAI's Chief Administrative Patent Judge, the Administrative Patent Judges, the BPAI itself, and the USPTO Deputy Director, see MPEP 1002.02, but these instances are probably very, very rare).  A renewed petition, filed within another strict 2-month deadline of the mail date of the first petition decision, will be titled RENEWED PETITION UNDER 37 C.F.R. 1.181 and will note on the cover page that "This communication is being filed pursuant to 37 C.F.R. § 1.181(a)(1) in response to the petition decision having mail date [date], which was a denial of the Applicants' [date] petition for reconsideration of a new matter objection issued with a final rejection mailed [date] in the above-captioned application."

Is this just how you do it, or does this follow some written policy somewhere?

No, you shouldn't need to invoke (a)(3) where (a)(1) will do.

What does (a)(3) mean and when, if ever, would you invoke it?

Have you considered filing a 1.183 petition to suspend the rules until your petition is resolved at the highest level (suffering PTA losses in the meanwhile)?

Under what circumstances would that be a good idea?  Are you talking about suspending deadlines?  Why would I ever want to let the wheels stop grinding?  Onward, ho.

I'm surprised that you asked: petitions are often not decided until after the shortened, extended, or statutory due date for response.  In many cases, you need the petition resolved to move forward, yet the due date forces you to file a 1.111 / 1.116 / appeal to keep prosecution going.  You want the petition resolved before that happens.  I have heard of attorneys filing 1.183 petitions to suspend rules while they wait for a 1.181 decision (and, in some cases, the rules are suspended and the 1.181 sits undecided for years).  Just remember that 1.183 petitions kill (some?) PTA.

I'm planning on filing a Freedom of Information Act Request.

Let me know how I can support this.

[/quote]

Send me a PM with your email address and I'll mail it to you so I can receive any feedback/input you have.

[Robert K S]

I usually cite from MPEP 2173.02 to get objections withdrawn...

Thanks for that.

Is this just how you do it, or does this follow some written policy somewhere?

When you get a petition dismissal/denial it sometimes tells you that your renewed petition must be titled as I titled it (and is due in 2 months).

What does (a)(3) mean and when, if ever, would you invoke it?

I think (3)'s just a catch-all, used for those rare situations when you can't get no justice by (1) or (2).

I'm surprised that you asked...

I've just never seen a situation where the only thing keeping an application from issue was an objection.  Examiners like disposals.  If there are no substantive rejections, they will usually withdraw objections in order to get the allowance, or call up the practitioner and come to a compromise that satisfies both so that the application can go to issue.  If, however, a case had both substantive rejections and objections, I'd want both the appeal and petition wheels turning simultaneously so as not to hold things up.  Let the response date come, and respond as best you can on all the other issues.  I can't imagine a (practical, non-theoretical) situation when an applicant wants to stop the clock to wait for a petition decision.

[patentatt]

I've just never seen a situation where the only thing keeping an application from issue was an objection.  Examiners like disposals.  If there are no substantive rejections, they will usually withdraw objections in order to get the allowance, or call up the practitioner and come to a compromise that satisfies both so that the application can go to issue.  If, however, a case had both substantive rejections and objections, I'd want both the appeal and petition wheels turning simultaneously so as not to hold things up.  Let the response date come, and respond as best you can on all the other issues.  I can't imagine a (practical, non-theoretical) situation when an applicant wants to stop the clock to wait for a petition decision.

But petitions aren't just for objections.

The most common reasons for petitions:

A. to have a new ground of rejection designated as a new ground and/or to have finality of an action withdrawn
B. to traverse an improper restriction requirement

Another situation (C): less common (but should be more common) - is where an office action fails to make a prima facie case, or even to substantively discuss rejected claims, at all.  In other words, the Examiner violated Rule 1.104(c) by not explaining the rejection.  This has been held to be a petitionable and not an appealable issue (see the Decision on Request for Rehearing in In re Lovin).

Each of those three situations A-C gives an applicant a strong reason to stop prosecution.  For A, there's no need to proceed under final rejection - and the limitations of Rule 1.116 - if you can get finality withdrawn and freely amend claims and submit evidence (esp. if you want to do so).  For B, there's no need to proceed while only some claims are being examined, if you want them all examined.  For C, there's no reason to proceed and "shoot arrows into the dark" if you don't understand what the heck the Examiner is saying, or how he is applying the art.

[khazzah]

I've just never seen a situation where the only thing keeping an application from issue was an objection. 

I've run into a few file histories in which an app issued after rejections were reversed at the BPAI, despite the presence of outstandnig objections. That is, the drawing or new matter objection magically disappears with no comment. And I think you're right: Examiners have every incentive to allow the case at this point.

But ... every once in a while the objection turns out to be a real problem. Check out this nightmare scenario:
http://allthingspros.blogspot.com/2011/07/applicant-caught-between-inconsistent.html

[JustAnotherExaminer]

I've never seen a 181 petition.  Petitions get auto-routed to the "Office of Petitions" and then decided there or further routed, depending on the petition type.

Petitions to make special based on certain auto-approving things (like age), or petitions to revive are decided by Office of Petitions.
Petitions to make accelerated examination (based on filing an ESD - examination support document) are routed to QAS's in the TC of the application because they actually have to know the art to make a decision.

I have no idea who 181 petitions go to.

[Robert K S]

Presumably you do see decisions on 181s?  Or have you just never had one of your applicants petition?

Here's a trivia question for everyone.  When can it be appropriate to challenge an objection through appeal rather than by petition?

[patentatt]

Here's a trivia question for everyone.  When can it be appropriate to challenge an objection through appeal rather than by petition?

The answer is subtle, and the case law is not crystal clear, but it's something like "when resolution of a rejection is related to resolution of the objection and substantially turns on resolution of the objection."  I can do more research later.  An example would be an objection to new matter and a WD rejection based on the new matter (e.g. adding material to the specification that alters the scope of a M+F claim).

[khazzah]

Here's a trivia question for everyone.  When can it be appropriate to challenge an objection through appeal rather than by petition?

patentatt hit the nail on the head: when the issues are intertwined.

The only times I've seen this come up at the BPAI is for an intertwined WD rejection and new matter objection. Perhaps there are other ways that issues could be intertwined. The Board recently explained it this way:

Ordinarily an objection is petitionable, and a rejection is appealable to the Board. When the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. Manual of Patent Examining Procedure (MPEP) § 2163.06, II. Review of New Matter Objections and/or Rejections (8th ed., Rev. 8, July 2008). See also MPEP § 608.04(c) (8th ed., Rev. 8, July 2008); 35 U.S.C. § 134(a); and 37 C.F.R. § 1.181(a)(1). While the Examiner has not made a new matter rejection or objection, in this case, the objection to the Specification for lack of antecedent basis and the written description rejection turn on the same issue of whether the claimed subject matter finds adequate support in the original disclosure. As such, we will decide both the objection and the rejection.
Ex parte Domanico

[JustAnotherExaminer]

Presumably you do see decisions on 181s?  Or have you just never had one of your applicants petition?

Here's a trivia question for everyone.  When can it be appropriate to challenge an objection through appeal rather than by petition?

If there's a legitimate 181 filed in a case you're handling you'll likely be getting a knock on your door by an angry director.  I have no idea what the protocol is after that, but I would presume they would want the examiner to brief them on the case in order to aid their decision-rendering process.