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

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 1.377 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.

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)

Petitions Handled in the Office of Petitions See the link below for further guidance on the petitions handled by the Office of Petitions. http://www.uspto.gov/patents/law/pep-00015program.jsp See MPEP 1002.02 to determine the Office to direct your petition to.

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: http://www.uspto.gov/patents/process/file/efs/guidance/epetition-quickstart.pdf

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)

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

ePetition Processing (Contd.) E-Petition Vs. Non-E-Petition Review - FY-2013 Type of Petition % Non-ePetitions % ePetitions Withdrawal from Representation 63 37 Withdraw from Issue 24 76 Withdraw from Issue, after Issue Fee payment with Express Abn 65 35 Withdraw from Issue – Patent Number Assigned 24 76 Withdraw from Issue – Express Abn - Patent Number Assigned 52 48 Revival-Unintentionally delayed payment of Issue Fee 76 24 Revival-Unintentionally delayed payment of Maint. Fee 44 56 Revival-Unintentional Delay in Notifying USPTO of Foreign Filing 66 34 Revival-Unintentional Delay - for Continuity Only 65 35 Petition to Make Special on the basis of Age 58 42 TOTAL 53 47 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)

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 8 1995; 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.

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.

Prioritized Examination (Track One) 37 CFR 1.102 (e) AND MPEP 708.02(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: http://www.uspto.gov/patents/init_events/Track_One.jsp 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.

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.

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.

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 http://www.uspto.gov/patents/init_events/pph/index.jsp For specific questions please email: pphfeedback@uspto.gov PPH petitions cannot be filed as ePetitions

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 708.02(a)) are processed in the Technology Center

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

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

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

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

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 http://www.uspto.gov/patents/init_events/patent_law_treaty.jsp 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

Fee Changes Current fee schedule available from the Fee Information page at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp 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

Getting your Petition to the Office of Petitions ePetition EFS-Web Mail Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450 Central Fax – (571) 273 - 8300 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) 273-0025 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 (571-272-3282) to inform us of the filing 9/18/2018

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) 272-3282; M- F 8:30 – 5:00 PM (EDT) Refer to the Office of Petitions website for more information and other tips: http://www.uspto.gov/patents/law/pep-00015program.jsp 9/18/2018

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

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

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

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

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.

Ombudsman Program – Process Applicant/Attorney access through USPTO.gov website or 571-272-5555 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.

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.

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.

Ombudsman Program Results as of 6/30/14

Ombudsman Program Results as of 5/31/14 FY 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

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.

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

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

Ombudsman Program Outreach Open Teleconferences Held for applicants/attorneys to address issues anonymously Last one held Oct. 2013. Presentations to Attorney or Inventor Groups How to use the program Best practices

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.

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!!!”

Contact Information To contact the Patents Ombudsman Program: OmbudsmanProgram@USPTO.gov 571-272-5555 Other Points of Contact: Joseph.Thomas@uspto.gov 571-272-1550 Dale.Shaw@uspto.gov 571-272-4666

Thank You!! Any Questions?