In the old days (meaning, before e-filing at the USPTO became possible), the practitioner who was filing a petition would simply drop the petition in the mail, directed to the USPTO generally. Someone in the USPTO mail room would look at each petition, and would pick where exactly within the USPTO to direct the petition so that it might be considered and decided.
Then the Internet happened and a decade later, the USPTO reacted to the Internet by setting up EFS-Web. In EFS-Web the burden of figuring out where exactly within USPTO a patent-related petition would be directed got shifted away from USPTO mail room personnel and onto the e-filer. The choices from which the patent e-filer might pick include:
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- Petition for review by the Office of Petitions
- Petition for review by the PCT legal office
- Petition for review by the Technology Center SPRE
When you are e-filing a petition, how should you pick where to send your petition?
I have some thoughts as to how an e-filer might pick the place to which to send a patent-related petition, but before I share those thoughts, I will mention that there are many, many types of petitions for which the e-filer does not need to pick a place to send it. These include the following:
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- Petition for expedited foreign filing license
- Petition to convert regular application to provisional
- Petition to make special under PCT patent prosecution highway
- Petition to make special based upon health
- Petition to make special in the two-for-one special program
- Petition to make special under non-PCT patent prosecution highway
- Petition to withdraw from issue before payment of the issue fee
For any of these seven petition types, the e-filer is not faced with the task of figuring out exactly where within the USPTO the petition should be directed. The EFS-Web system looks at the document description provided by the e-filer and sends a message to the appropriate person within the USPTO.
(What is the two-for-one program? That’s the one where, if you have two really really old patent applications that have not been examined, you can abandon one of them and the USPTO will make the other one “special”.)
There are also an ever-growing number of petition types which are automatically granted by EFS-Web, including:
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- Petition to make special based on age
- Petition to accept unintentionally delayed payment of a maintenance fee
- Request for withdrawal as attorney or agent of record
- Petition to withdraw from issue after payment of the issue fee
- Petition for revival
- Petition to correct assignee after payment of issue fee
For each of these six petition types, the EFS-Web system checks for various conditions being true and, if the conditions are satisfied, EFS-Web grants the petition automatically. There is thus no need for the e-filer to figure out where within the USPTO the petition should be sent.
Which gets us back to the original point of this blog posting, which is that if the petition that you are e-filing is not in one of these thirteen special categories, the burden remains with you to figure out where within the USPTO to send your petition. Should you send it to the Office of Patent Petitions? Should you send it to the Technology Center SPRE? Should you send it to the PCT legal office?
As it turns out, the MPEP has an entire chapter devoted to the many kinds of petitions that you might file and the many places within the USPTO where you might send those petitions. The MPEP lists some twenty-two places where you might send your petition depending on its subject matter. I was astonished just now to see that this MPEP listing of places to send petitions is so finely detailed as to specify different places to send petitions depending, for example, upon whether the patent application happens to be in technology center 3640 or 1600 or 2900.
The exact location within the patent examination chain of command turns out to be critical. Depending upon the details of your petition, you might (according to this MPEP section) be supposed to send your petition to:
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- the Primary Examiner
- the Supervisory Patent Examiner
- the Special Program Examiner in the technology center
- the Director of the technology center
- the Deputy Commissioner for Patent Examination Policy
- the Deputy Director of the USPTO
- the Director of the USPTO
Or your petition might not be directed to the chain of command for patent examination at all. According to the MPEP section, depending on its subject matter, your petition might properly be directed to:
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- the Certificates of Correction Branch
- the Director of the Office of Initial Patent Examination
- the Director of the Office of Patent Publication
- the Administrative Patent Judges
- the Board of Patent Appeals and Interferences
- the Chief Administrative Judge of the Board of Patent Appeals and Interferences
(Yes, I realize this section of the MPEP is out of date. The OIPE has been renamed OPAP. The BPAI has been renamed PTAB. I am sure the editor of the MPEP will eventually bring this section of the MPEP up to date.)
The alert reader will by now have realized that there is a Big Problem with EFS-Web, namely that although the MPEP lists some twenty-two places where you might be required to send your petition (depending upon its particular subject matter), EFS-Web gives you only three choices as to where to send your petition. The three choices, as mentioned above, are:
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- Petition for review by the Office of Petitions
- Petition for review by the PCT legal office
- Petition for review by the Technology Center SPRE
So let’s suppose your petition is one of the petitions for which the MPEP specifies you must send it to (say) the Deputy Commissioner for Patent Examination Policy. How, in EFS-Web, would you make this happen? The answer is, you can’t. EFS-Web does not permit you to comply with the MPEP for such a petition.
When I run into this problem, which is that I am e-filing something at the USPTO and I can’t find a document description that seems to work, my usual fallback position is to index the document as a “miscellaneous incoming letter”. What happens documents that are indexed this way? I imagine a sort of cesspool within the USPTO where miscellaneous incoming letters go. And some hapless USPTO employees are tasked with rummaging through the cesspool, trying to guess where to send things.
But now let’s return to the main point of this post, which is that if you are filing a petition, and if it does not fall into one of the thirteen types for which EFS-Web figures it out for you, you probably have no choice but to try to shoehorn your petition into one of the three destinations offered by EFS-Web. Again, the three choices are the Office of Patent Petitions, the PCT legal office, and the Technology Center SPRE.
How to pick?
Well, these days the Office of Patent Petitions has fallen seriously behind in its work. As I have blogged, OPP nowadays takes five or six months to decide even the simplest petition.
This backlog at OPP does not promote science and the useful arts. Consider a case where an Examiner has made a mistake in a patent application. The mistake will be communicated in an Office Action. The Office Action will have a shortened period for reply. For example if the mistake is that the Examiner did a distinct-invention restriction in a 371 case, the shortened period will be two months. In the event of such a mistake we might ask the Examiner to withdraw the restriction requirement. Barring some surprise the Examiner would ignore the request. We might then ask the SPE to help, reaching voice mail. Barring some surprise the SPE would not return our call. So then we would file a petition, asking that the Examiner be directed to withdraw the restriction requirement.
Until very recently our habit was to direct such petitions to the OPP. The problem was that OPP would not get around to granting the petition until perhaps five months later. By this time, of course, the Examiner might mail a Notice of Abandonment. If this were to happen, we would then have to ask OPP for further relief, namely directing the Examiner to withdraw the holding of abandonment.
We run into this problem quite often, namely the problem of an Examiner wrongly applying the distinct-invention standard in a 371 case. We run into this problem an average of every three weeks or so. So anyway what we tried a few weeks ago was something different from what we usually did. What we tried was indexing our petition as a petition to be decided by the SPRE of the Technology Center. Rather than indexing it as a petition to be decided by OPP.
What happened was refreshing. Instead of having to wait five and a half months for OPP to grant the petition, we only had to wait two and a half months for the Tech Center SPRE to grant the petition. One nice benefit of this is that the six-month statutory period had not yet run out. So we were saved from having to get someone to direct the Examiner to withdraw the holding of abandonment.
Of course what I worry about now is that as a result of this blog post, lots of e-filers might start sending their petitions to the Tech Center SPREs instead of to OPP. In that event, maybe some of the backlog of undecided petitions would shift from OPP over to the Tech Centers.
As usual, comments are welcome.