1. USPTO PETITIONS PROCESS
John Cottingham Director Office of Petitions Office of the Deputy Commissioner For Patent Examination Policy

2. Petitions Handled in the Office of Petitions
Petitions to Accord or Correct Filing Date (37 CFR 1.57(a), 1.53(e), 1.182, 1.10).
Petitions to Revive Abandoned Applications (37 CFR 1.137(a) and (f)).
Petitions to Withdraw Holding of Abandonment (37 CFR 1.181).
Petitions to Reinstate Expired Patents (37 CFR and 1.378(b)).
Petitions to Accept Unintentionally Delayed Benefit Claims (37 CFR 1.78, 1.55).
Petitions for Restoration of Priority (37 CFR 1.78, 1.55).
Petitions to Correct Assignee Data (37 CFR 3.81)
Petitions to Make Special under Prioritized Examination, Patent Prosecution Highway, Age, and Health (37 CFR 1.102).
Petitions to withdraw patent applications from issue after payment of the issue fee under 37 CFR 1.313(c).
The list represents the common types of petitions decided in the Office of Petitions.
Petitions are decided in other parts of the Office. See MPEP section 1002.

3. Petitions Handled in the Office of Petitions
Petitions for Applicant Showing Sufficient Proprietary Interest (37 CFR 1.46), only for applications filed on or after September 16, 2012.
Petitions to Accept Declaration w/o signature of Inventors (37 CFR 1.47(a), (b)), only for applications filed prior to September 16, 2012.
Petitions to Expunge Application or Assignment Information (37 CFR 1.59 and 1.182)
Requests to Withdraw as Attorney or Agent of Record (37 CFR 1.36)
Requests for Patent Term Adjustment (37 CFR 1.705(b), (d))
Requests for Corrected Patent Application Publication (37 CFR 1.221(b))
Requests for Retroactive Foreign Filing License (37 CFR 5.25)

4. Petitions Handled in the Office of Petitions
See the link below for further guidance on the petitions handled by the Office of Petitions.
See MPEP to determine the Office to direct your petition to.

5. ePetition Processing ePetitions can be completely filled out online.
Decisions are instantaneous and uploaded to IFW.
ePetitions will only be accepted if every requirement is satisfied, therefore the only decision of record is a grant.
When the ePetition is granted, petitioner will receive an acknowledgement receipt that will also include a petition grant letter confirming approval of the ePetition.
A Quick Start Guide for ePetitions is available at:

6. ePetition Processing (Contd.)
PDF-based EFS-Web Petitions Filed and Decided Electronically:
Petitions to Make Special Based on Age.
Web-based (non-PDF) – information entered directly into EFS-Web screens:
Petition to Accept Unintentionally Delayed Payment of Maintenance Fee
Request for Withdrawal as Attorney or Agent of Record (37 CFR 1.36).
Petitions to Withdraw from Issue after Payment of the Issue Fee
Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2))
Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3))
Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2) with Assigned Patent Number)
Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3) with Assigned Patent Number)

7. ePetition Processing (Contd.)
Web-based (non-PDF) – information entered directly into EFS-Web screens:
Petitions for Revival
Petition to Accept Late Payment of Issue Fee - Unintentional Late Payment (37 CFR 1.137(a))
Petition for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))
Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(b))
Petition for Revival of an Application Abandoned Unintentionally (37 CFR 1.137(b)) (For cases abandoned after 1st action and prior to Notice of Allowance)
Petition for Issuance of Patent in Name of the Assignee or Correction of Assignee Name After Payment of the Issue Fee Under 37 CFR 3.81

8. ePetition Processing (Contd.)
E-Petition Vs. Non-E-Petition Review - FY-2013
Type of Petition % Non-ePetitions % ePetitions
Withdrawal from Representation
Withdraw from Issue
Withdraw from Issue, after Issue Fee payment with Express Abn
Withdraw from Issue – Patent Number Assigned
Withdraw from Issue – Express Abn - Patent Number Assigned
Revival-Unintentionally delayed payment of Issue Fee
Revival-Unintentionally delayed payment of Maint. Fee
Revival-Unintentional Delay in Notifying USPTO of Foreign Filing
Revival-Unintentional Delay - for Continuity Only
Petition to Make Special on the basis of Age
TOTAL
The TOTAL entries correspond to all ePetitions received by OPET; not just the ones listed
Of all the petitions decided by the OPET, about 14% were ePetitions (Not all petitions decided could be filed as ePetitions)

9. ePetition Processing - Revivals
ePetition Process not available for petitions requiring:
a Terminal Disclaimer, such as for a Design application or an application filed before June ;
After Final amendments that are not accompanied by an RCE;
submissions after allowance or applications under appeal;
applications undergoing re-examination; and
applications abandoned for more than 2 years.
In each of these situations, a deciding Official has to manually review the petition/submission
Under 1.137(b)(4), The Director may require additional information where there is a question whether the delay was unintentional.

10. ePetition Processing – Reinstatement of Expired Patents
ePetition Process not available :
If you want to reinstate an expired patent that has been reissued, or to reinstate an expired reissue.
If you were not associated with the patent at the time of expiry.
If you want to include an explanation of the circumstances surrounding the delay.
If Patent has expired for more than 2 years.
In each of these situations, a deciding Official has to manually review the petition/submission
Under 1.378(a), the delay in payment of the maintenance fee has to be shown to the satisfaction of the Director to have been unintentional.
Under 1.378(b)(3), The Director may require additional information where there is a question whether the delay was unintentional.

11. Prioritized Examination (Track One)
37 CFR (e) AND MPEP (b)
Provides early examination and final disposition of an application within about 12 months.
Requires fees under 37 CFR §§ 1.17(c), 1.17(i), and 1.18(d).
Must be filed electronically via EFS-Web.
May be filed with a new application or with a Request for Continued Examination (RCE).
Further guidance provided on USPTO website:
Also see Federal Register ,Vol. 79, No. 43, March 5, 2014, for a recent update to the Track One Requirements
The single biggest reason for dismissals since the rule change is applicant’s filing an extension of time.
To date in FY2014, 5,643 track 1 requests have been granted out of 6,018 filed.

12. Changes to the Track 1 Program
USPTO changed the Track 1 program to reduce the amount of dismissed requests to enter the program.
The interim rules published on March 5, 2014 now allows:
Filing an ADS on filing and delay filing of the Oath/Declaration;
Eliminated the requirement for paying any application size fee, and excess claims fees on filing; and
Allows for the applicant to file an amendment to limit an application to four independent claims and 30 claims total.
Applicants still have to meet all the other requirements of the Track 1 program on filing and cannot file any extensions of time.
These were the were the main reasons for dismissals of Track 1 requests.
The most dismissals were when applicants filed the ADS in lieu of the Oath/Dec due to the AIA changes.
These changes allow for some of the AIA changes into the program.

13. Track 1 Statistics Dismissal Rates of Track 1 Requests
Prior to the Rule: 8% for FY 14
After the Rule: 6.2% for FY 14
Dismissal rate drops to 4.7% for only those filed after March 5, 2014
The single biggest reason for dismissals since the rule change is applicant’s filing an extension of time.
To date in FY2014, 5,643 track 1 requests have been granted out of 6,018 filed.

14. Petitions to Make Special under Patent Prosecution Highway
An application already reviewed by a participating foreign patent office will be examined generally within 2-3 months from the grant of the PPH request
The foreign patent office must rule that at least one claim is patentable, and the claims before the USPTO must sufficiently correspond to the claims ruled allowable
Must be filed electronically via EFS-Web
Examination of the U.S. application has not begun
The relationship between the U.S. and foreign application must be clear
Further guidance and forms provided on USPTO website
For specific questions please
PPH petitions cannot be filed as ePetitions

15. Petitions to Make Special under (cont.)
Age
Provide a statement from applicant or a registered practitioner that he or she has evidence that the applicant is 65 years of age or older
Can be filed as an ePetition
Health
Provide evidence (e.g. doctor’s certificate) showing that applicant’s health is such that he or she may not be available to assist in the prosecution of the application if it runs its normal course
Petitions to make special under Accelerated Examination (MPEP (a)) are processed in the Technology Center

16. Restoration of Priority or Benefit
PLT and PLTIA provide for restoration of:
Right of foreign priority in applications filed more than twelve months (six months in designs) after the filing date of the foreign application.
Domestic benefit of a provisional application in applications filed more than twelve months after the filing date of the provisional application.
Rule Changes to implement PLTIA generally effective as of December 18, 2013 with some exceptions
See the PLT microsite (listed on slide #20) for details
9/18/2018

17. Restoration of Priority or Benefit
PLT and PLTIA require that the delay in filing the “subsequent” application within the priority or benefit period have been unintentional.
Not an “extension” of the priority or benefit period.
PLTIA requires that the “subsequent” application have been filed within two months of the expiration of the twelve-month (six-month in designs) priority or benefit period.
9/18/2018

18. Petition to Restore the Right of Priority or Benefit
Petition to restore the right of priority or benefit must include:
Priority or benefit claim,
“Unintentional” petition fee ($1700 for large entity and $850 for small entity), and
Statement that the delay in filing the subsequent application was unintentional.
9/18/2018

19. Restoration of Patent Rights
PLTIA eliminates the “unavoidable” delay standard as a basis for:
Reviving an abandoned application,
Accepting a delayed patent owner response in reexamination, or
Accepting a delayed maintenance fee payment.
9/18/2018

20. Restoration of Patent Rights
PLTIA eliminates the twenty-four month time period requirement for petitions to accept an unintentionally delayed maintenance fee payment.
See for further information on PLT and PLTIA
If filing multiple maintenance fees in an expired patent in one submission, a separate petition fee is required for each delayed maintenance fee payment.  A statement that the delay in payment of the maintenance fee was unintentional is also required with respect to each delayed maintenance fee payment.  While the patentee can include the statements of unintentional delay in a single petition (if desired), a separate petition fee is required for each delayed maintenance fee payment.
9/18/2018

21. Fee Changes
Current fee schedule available from the Fee Information page at
Fee reductions (if applicable):
Small Entity – 50% reduction in fee
Person, small business concern, or nonprofit organization (37 CFR 1.27)
Micro Entity – 75% reduction in fee
See PTO FORM SB 15A/15B for requirements
Micro entity discount does not currently apply to the PLTIA “unintentional” petition fee.
Micro entity discount applies to fees set under section 10(a) of the America Invents Act (AIA).
“Unintentional” petition fee will have a micro entity amount when patent fees are set under section 10(a) of the AIA again.
9/18/2018

22. Getting your Petition to the Office of Petitions
ePetition
EFS-Web
Mail
Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
Central Fax – (571)
Deliver to Customer Service Window at Randolph Bldg.
ONLY FOR PETITIONS TO WITHDRAW FROM ISSUE (in addition to the options listed above, you have the option to)
fax to (571) Office of Petitions
hand carry to security gate in Madison West lobby (600 Dulany Street, Alexandria, VA)
guard will call Office of Petitions and a staff member will meet you in the lobby with log book and date stamp.
For petitions to withdraw from Issue, please call Petitions Help Desk ( ) to inform us of the filing
9/18/2018

23. Contact Office of Petitions
General inquiries, status requests or routine matters (e.g., maintenance fees, provisional applications, revivals, small entity).
Office of Petitions, Phone Duty Line
(571) ; M- F 8:30 – 5:00 PM (EDT)
Refer to the Office of Petitions website for more information and other tips:
9/18/2018

24. Patents Ombudsman Program
Joseph Thomas
TC Director
Technology Center 2800
June 2014

25. Patents Ombudsman Program
Started as a one Year Pilot in April 2010
Program has been continued due to its success
Facilitate complaint-handling when applications become stalled in examination process
Process does not circumvent normal examination process

26. Patents Ombudsman Program
Track complaints to ensure each is handled within 10 business days
Currently averaging 3 business days
Provide feedback to upper management regarding training needs based on complaint trends

27. What Is An Ombudsman?
International Ombudsman Association Standards of Practice:
Independence
Neutrality and Impartiality
Confidentiality
Note that we advocate for the process; not for the examiner or applicant

28. Ombudsman Program - Structure
Central Program Administration
Currently 2 full time and one part time employee
In process to add a third full time employee
Ombudsman Reps in Each TC
Senior SPEs
Experienced QAS
Ombudsman Reps in all other business units (internal and external to Patents)
Coordination with Office of Innovation Development
Central Program Admin handles all calls that come into shared phone line as well as transfers from other call center (e.g., UCC); are considering expanding program to have temporary details for additional support.

29. Ombudsman Program – Process
Applicant/Attorney access through USPTO.gov website or
Ombudsman will call within one business day to obtain details
Complaint is routed to the person who can best address it (SPE, TC Director, etc)
Ombudsman may or may not address the complaint directly
Note: this process differs in that our ombudsman do not advocate for the applicant or examiner, but rather the process.
How to submit confidentially and why? Just tell us when you contact us and we will put it in the database, mark it confidential and not take further action. But we will consider it as we look at training needs, etc.

30. Ombudsman Program – Tracking Database
Complaints will be tracked to ensure each is addressed
Database will contain only high level information; the application itself will show details of resolution
Database will be used to identify trends that indicate training needs.

31. Ombudsman Program Results as of 6/30/14
Total inquires to program = 9976
FY 2010 (partial year) = 268
FY 2011 = 372
FY 2012 = 951
FY 2013 = 4292
FY 2014 = 4093 (as of June 2014)
Average number of days to close inquiry = 3.0
Closing an inquiry means that the issue was addressed; it may not necessarily be the result expected or preferred by Applicant; but we do provide a pathway/options going forward, when possible.

32. Ombudsman Program Results as of 6/30/14

33. Ombudsman Program Results as of 5/31/14FY
Oct.
Nov.
Dec.
Jan.
Feb.
Mar.
Apr.
May
June
July
Aug.
Sept.
Total
FY 2010 97 47 29 50 45
268
FY 2011 35 33 28 37 26 27 25 20 31 41 34
372
FY 2012 40 30 42 71
123
129 87 98 99
100
951
FY 2013
125
273
234
377
291
454
544
450
404
408
360
4292
FY 2014
405
416
366
476
531
561
459
420
4093

34. Ombudsman Program Types of Inquiries
Most frequent types of inquiries
Status Inquires
Filings
Case Prosecution Concerns
General Questions
Petitions
Provisional Applications
First Office Action Estimator
Fees
Pair
After Final
Note new categories for FY 14 added Micro entity status and Corrected filing receipt issues.

35. Ombudsman Program Top Ten Inquiries Since its Inception
Category
Totals
Status Inquiries
1607
Filings
940
Case Prosecution Concern
938
General Questions
777
Petitions
675
Provisional
544
First Office Action Estimator
441
Fees
345
PAIR
299
After Final
296

36. Ombudsman Program Types of Inquiries
Inquirer
FY2012
FY2013
FY2014
Attorney/Agent
508
1530
1455
Pro Se
308
1748
1760
Other**
105
1014
878
Define Other – applicants who have an attorney or agent and call us directly
Most of our growth has come in the Pro se and Other categories

37. Ombudsman Program Outreach
Open Teleconferences
Held for applicants/attorneys to address issues anonymously
Last one held Oct
Presentations to Attorney or Inventor Groups
How to use the program
Best practices

38. Ombudsman Program Evaluation
Surveys conducted with users
First survey closed October 8, 2010
Second survey closed May 26, 2011
Third survey closed April 30, 2012
Fourth survey closed May 17, 2013
60% overall satisfied with the program
68% would recommend the program to others.
Fifth survey is undergoing OMB approval
Informal feedback and frequent multiple uses
Approximately two-thirds of those responding to both surveys were either satisfied or very satisfied with their experience with the program. In second survey, over 90% of those who responded said the program should be made permanent.

39. Ombudsman Program What Users Are Saying About The Program:
“Program works, if more practitioners felt comfortable participating, I believe it could help the backlog and avoid appeal.”
“They did a great job in sorting out the issues very quickly. Thank you very much.
“This program brings a voice to the inventor that he normally would not have…THANK YOU!!!”

40. Contact Information
To contact the Patents Ombudsman Program:
Other Points of Contact:

41. Thank You!!
Any Questions?