Editing MPEP 1000

{{MPEP Chapter|900|1100}}

'''<big>Chapter 1000 Matters Decided by Various U.S. Patent and Trademark Office Officials</big>'''

__TOC__

==1001 Statutory Authority of  Director of the USPTO==

35 U.S.C. 2. Powers and duties.

(a)IN GENERAL.— The United States Patent and Trademark 
Office, subject to the policy direction of the Secretary of 
Commerce— 

(1)shall be responsible for the granting and issuing of 
patents and the registration of trademarks; and

(2)shall be responsible for disseminating to the public 
information with respect to patents and trademarks.

(b)SPECIFIC POWERS.— The Office— 

(1)shall adopt and use a seal of the Office, which shall be 
judicially noticed and with which letters patent, certificates of 
trademark registrations, and papers issued by the Office shall be 
authenticated;

(2)may establish regulations, not inconsistent with law, 
which— 

(A)shall govern the conduct of proceedings in the 
Office;



(B)shall be made in accordance with section 553 of 
title 5;

(C)shall facilitate and expedite the processing of 
patent applications, particularly those which can be filed, stored, 
processed, searched, and retrieved electronically, subject to the 
provisions of section 122 relating to the confidential status of 
applications;

(D)may govern the recognition and conduct of agents, 
attorneys, or other persons representing applicants or other parties 
before the Office, and may require them, before being recognized 
as representatives of applicants or other persons, to show that they 
are of good moral character and reputation and are possessed of 
the necessary qualifications to render to applicants or other persons 
valuable service, advice, and assistance in the presentation or 
prosecution of their applications or other business before the 
Office;

(E)shall recognize the public interest in continuing to 
safeguard broad access to the United States patent system through 
the reduced fee structure for small entities under section 41(h)(1) 
of this title; and

(F)provide for the development of a performance-
based process that includes quantitative and qualitative measures 
and standards for evaluating cost-effectiveness and is consistent 
with the principles of impartiality and competitiveness;

(3)may acquire, construct, purchase, lease, hold, manage, 
operate, improve, alter, and renovate any real, personal, or mixed 
property, or any interest therein, as it considers necessary to carry 
out its functions;

(4)(A)may make such purchases, contracts for the construction, 
maintenance, or management and operation of 
facilities,
 
and contracts for supplies or services, without regard to 




 

the provisions of the Federal Property and Administrative Services 
Act of 1949 (40 U.S.C. 471 et seq.), the Public Buildings 
Act (40 U.S.C. 601 et seq.), and the McKinney-Vento Homeless 
Assistance Act (42 U.S.C. 11301 et seq.); and



(B) may enter into and perform such purchases and 
contracts for printing services, including the process of composition, 
platemaking, presswork, silk screen processes, binding, 
microform, and the products of such processes, as it considers 
necessary to carry out the functions of the Office, without regard 
to sections 501 through 517 and 1101 through 1123 of title 44;

(5)may use, with their consent, services, equipment, personnel, 
and facilities of other departments, agencies, and instrumentalities 
of the Federal Government, on a reimbursable basis, 
and cooperate with such other departments, agencies, and instrumentalities 
in the establishment and use of services, equipment, 
and facilities of the Office;

(6)may, when the Director determines that it is practicable, 
efficient, and cost-effective to do so, use, with the consent of 
the United States and the agency, instrumentality, Patent and 
Trademark Office, or international organization concerned, the 
services, records, facilities, or personnel of any State or local government 
agency or instrumentality or foreign patent and trademark 
office or international organization to perform functions on 
its behalf;

(7)may retain and use all of its revenues and receipts, 
including revenues from the sale, lease, or disposal of any real, 
personal, or mixed property, or any interest therein, of the Office; 

(8)shall advise the President, through the Secretary of 
Commerce, on national and certain international intellectual property 
policy issues;

(9)shall advise Federal departments and agencies on matters 
of intellectual property policy in the United States and intellectual 
property protection in other countries;

(10)shall provide guidance, as appropriate, with respect to 
proposals by agencies to assist foreign governments and international 
intergovernmental organizations on matters of intellectual 
property protection;

(11)may conduct programs, studies, or exchanges of items 
or services regarding domestic and international intellectual property 
law and the effectiveness of intellectual property protection 
domestically and throughout the world;

(12)(A)shall advise the Secretary of Commerce on programs 
and studies relating to intellectual property policy that are 
conducted, or authorized to be conducted, cooperatively with foreign 
intellectual property offices and international intergovernmental 
organizations; and

(B)may conduct programs and studies described in 
subparagraph (A); and

(13)(A)in coordination with the Department of State, may 
conduct programs and studies cooperatively with foreign intellectual 
property offices and international intergovernmental organizations; 
and

(B)with the concurrence of the Secretary of State, 
may authorize the transfer of not to exceed $100,000 in any year 
to the Department of State for the purpose of making special payments 
to international intergovernmental organizations for studies 
and programs for advancing international cooperation concerning 
patents, trademarks, and other matters.

(c)CLARIFICATION OF SPECIFIC POWERS.— 

(1)The special payments under subsection (b)(13)(B) 
shall be in addition to any other payments or contributions to 
international organizations described in subsection (b)(13)(B) and 
shall not be subject to any limitations imposed by law on the 
amounts of such other payments or contributions by the United 
States Government.

(2)Nothing in subsection (b) shall derogate from the 
duties of the Secretary of State or from the duties of the United 
States Trade Representative as set forth in section 141 of the 
Trade Act of 1974 (19 U.S.C. 2171).

(3)Nothing in subsection (b) shall derogate from the 
duties and functions of the Register of Copyrights or otherwise 
alter current authorities relating to copyright matters.

(4)In exercising the Director’s powers under paragraphs 
(3) and (4)(A) of subsection (b), the Director shall consult with 
the Administrator of General Services.

(5)In exercising the Director’s powers and duties under 
this section, the Director shall consult with the Register of Copyrights 
on all copyright and related matters.

(d)CONSTRUCTION.— Nothing in this section shall be 
construed to nullify, void, cancel, or interrupt any pending 
request-for-proposal let or contract issued by the General Services 
Administration for the specific purpose of relocating or leasing 
space to the United States Patent and Trademark Office.

35 U.S.C. 3. Officers and employees.

(a)UNDER SECRETARY AND DIRECTOR.— 

(1)IN GENERAL.— The powers and duties of the 
United States Patent and Trademark Office shall be vested in an 
Under Secretary of Commerce for Intellectual Property and Director 
of the United States Patent and Trademark Office (in this title 
referred to as the “Director”), who shall be a citizen of the United 
States and who shall be appointed by the President, by and with 
the advice and consent of the Senate. The Director shall be a person 
who has a professional background and experience in patent 
or trademark law.

(2)DUTIES.— 

(A)IN GENERAL.— The Director shall be responsible 
for providing policy direction and management supervision 
for the Office and for the issuance of patents and the registration 
of trademarks. The Director shall perform these duties in a fair, 
impartial, and equitable manner.



(B)CONSULTING WITH THE PUBLIC ADVISORY 
COMMITTEES.— The Director shall consult with the 
Patent Public Advisory Committee established in section 5 on a 
regular basis on matters relating to the patent operations of the 
Office, shall consult with the Trademark Public Advisory Committee 
established in section 5 on a regular basis on matters relating 
to the trademark operations of the Office, and shall consult 
with the respective Public Advisory Committee before submitting 
budgetary proposals to the Office of Management and Budget or 
changing or proposing to change patent or trademark user fees 
or 
patent or trademark regulations which are subject to the 




 

requirement to provide notice and opportunity for public comment 
under section 553 of title 5, as the case may be.

(3)OATH.— The Director shall, before taking office, 
take an oath to discharge faithfully the duties of the Office.

(4)REMOVAL.— The Director may be removed from 
office by the President. The President shall provide notification of 
any such removal to both Houses of Congress.

(b)OFFICERS AND EMPLOYEES OF THE OFFICE.— 

(1)DEPUTY UNDER SECRETARY AND DEPUTY 
DIRECTOR.— The Secretary of Commerce, upon nomination by 
the Director, shall appoint a Deputy Under Secretary of Commerce 
for Intellectual Property and Deputy Director of the United 
States Patent and Trademark Office who shall be vested with the 
authority to act in the capacity of the Director in the event of the 
absence or incapacity of the Director. The Deputy Director shall 
be a citizen of the United States who has a professional background 
and experience in patent or trademark law.



(2)COMMISSIONERS.— 

(A)APPOINTMENT AND DUTIES.— The Secretary 
of Commerce shall appoint a Commissioner for Patents and a 
Commissioner for Trademarks, without regard to chapter 33, 51, 
or 53 of title 5. The Commissioner for Patents shall be a citizen of 
the United States with demonstrated management ability and professional 
background and experience in patent law and serve for a 
term of 5 
years. The Commissioner for Trademarks shall be a citizen 
of the United States with demonstrated management ability 
and professional background and experience in trademark law and 
serve for a term of 5 years. The Commissioner for Patents and the 
Commissioner for Trademarks shall serve as the chief operating 
officers for the operations of the Office relating to patents and 
trademarks, respectively, and shall be responsible for the management 
and direction of all aspects of the activities of the Office that 
affect the administration of patent and trademark operations, 
respectively. The Secretary may reappoint a Commissioner to subsequent 
terms of 5 years as long as the performance of the Commissioner 
as set forth in the performance agreement in 
subparagraph (B) is satisfactory.

(B)SALARY AND PERFORMANCE AGREEMENT.— 
The Commissioners shall be paid an annual rate of 
basic pay not to exceed the maximum rate of basic pay for the 
Senior Executive Service established under section 5382 of title 5, 
including any applicable locality-based comparability payment 
that may be authorized under section 5304(h)(2)(C) of title 5. The 
compensation of the Commissioners shall be considered, for purposes 
of section 207(c)(2)(A) of title 18, to be the equivalent of 
that described under clause (ii) of section 207(c)(2)(A) of title 18. 
In addition, the Commissioners may receive a bonus in an amount 
of up to, but not in excess of, 50 percent of the Commissioners’ 
annual rate of basic pay, based upon an evaluation by the Secretary 
of Commerce, acting through the Director, of the Commissioners’ 
performance as defined in an annual performance 
agreement between the Commissioners and the Secretary. The 
annual performance agreements shall incorporate measurable 
organization and individual goals in key operational areas as 
delineated in an annual performance plan agreed to by the Commissioners 
and the Secretary. Payment of a bonus under this subparagraph 
may be made to the Commissioners only to the extent 
that such payment does not cause the Commissioners’ total aggregate 
compensation in a calendar year to equal or exceed the 
amount of the salary of the Vice President under section 104 of 
title 3.

(C)REMOVAL.— The Commissioners may be 
removed from office by the Secretary for misconduct or nonsatisfactory 
performance under the performance agreement described 
in subparagraph (B), without regard to the provisions of title 5. 
The Secretary shall provide notification of any such removal to 
both Houses of Congress.

(3)OTHER OFFICERS AND EMPLOYEES.— The 
Director shall— 

(A)appoint such officers, employees (including attorneys), 
and agents of the Office as the Director considers necessary 
to carry out the functions of the Office; and

(B)define the title, authority, and duties of such officers 
and employees and delegate to them such of the powers vested 
in the Office as the Director may determine. 

The Office shall not be subject to any administratively 
or statutorily imposed limitation on positions or personnel, and no 
positions or personnel of the Office shall be taken into account for 
purposes of applying any such limitation

(4)TRAINING OF EXAMINERS.— The Office shall 
submit to the Congress a proposal to provide an incentive program 
to retain as employees patent and trademark examiners of the primary 
examiner grade or higher who are eligible for retirement, for 
the sole purpose of training patent and trademark examiners.

(5)NATIONAL SECURITY POSITIONS.— The Director, 
in consultation with the Director of the Office of Personnel 
Management, shall maintain a program for identifying national 
security positions and providing for appropriate security clearances, 
in order to maintain the secrecy of certain inventions, as 
described in section 181, and to prevent disclosure of sensitive 
and strategic information in the interest of national security.



1001.01Modes of Exercising Authority 
[R-2]

The  authority of the Director of the USPTO to 
review and supervise the work of the Office is exercised 
by the promulgation of the Rules of Practice; 
issuance of orders, notices and memoranda stating 
Office policies and modes for effectuating these policies; 
decisions on petitions by applicants; and by the 
designation of particular cases which must be submitted 
to the Director of the USPTO or other officials 
authorized by the Director of the USPTO. The 
present Chapter deals with the latter two items. 

37 CFR 1.181(g) states, “The Director may delegate 
to appropriate Patent and Trademark Office officials 
the determination of petitions.”




 

The various delegations to various Office officials 
are set forth in this Chapter.

The delegations set forth in this Chapter do not confer 
a right to have a matter decided by a 
specific 
Office official, rather, such delegations aid in 
the efficient treatment of petitions by the Office. A 
delegation of supervisory or higher level review 
authority over a matter carries with it the authority to 
decide the matter ab initio.

1002Petitions to the  Director of the 
USPTO [R-2]



37 CFR 1.181. Petition to the Director.

(a)Petition may be taken to the Director:

(1)From any action or requirement of any examiner in 
the ex parte prosecution of an application, or in ex parte or inter 
partes prosecution of a reexamination proceeding which is not 
subject to appeal to the Board of Patent Appeals and Interferences 
or to the court; 



(2)In cases in which a statute or the rules specify that the 
matter is to be determined directly by or reviewed by the Director; 
and

(3)To invoke the supervisory authority of the Director 
in appropriate circumstances. For petitions in interferences, see 
§
 
1.644.

(b)Any such petition must contain a statement of the facts 
involved and the point or points to be reviewed and the action 
requested. Briefs or memoranda, if any, in support thereof should 
accompany or be embodied in the petition; and where facts are to 
be proven, the proof in the form of affidavits or declarations (and 
exhibits, if any) must accompany the petition.



(c)When a petition is taken from an action or requirement of 
an examiner in the ex parte prosecution of an application, or in the 
ex parte or inter partes prosecution of a reexamination proceeding, 
it may be required that there have been a proper request for 
reconsideration (§ 1.111) and a repeated action by the examiner. 
The examiner may be directed by the Director to furnish a written 
statement, within a specified time, setting forth the reasons for his 
or her decision upon the matters averred in the petition, supplying 
a copy to the petitioner.

(d)Where a fee is required for a petition to the Director 
the appropriate section of this part will so indicate. If any required 
fee does not accompany the petition, the petition will be dismissed.


(e)Oral hearing will not be granted except when considered 
necessary by the Director.

(f)The mere filing of a petition will not stay any period for 
reply that may be running against the application, nor act as a stay 
of other proceedings. Any petition under this part not filed within 
two months of the mailing date of the action or notice from which 
relief is requested may be dismissed as untimely, except as otherwise 
provided. This two-month period is not extendable.



(g)The Director may delegate to appropriate Patent and 
Trademark Office officials the determination of petitions.

37 CFR 1.182. Questions not specifically provided for.

All situations not specifically provided for in the regulations of 
this part will be decided in accordance with the merits of each situation 
by or under the authority of the Director, subject to such 
other requirements as may be imposed, and such decision will be 
communicated to the interested parties in writing. Any petition 
seeking a decision under this section must be accompanied by the 
petition fee set forth in §
 
1.17(h).

37 CFR 1.183. Suspension of rules.

In an extraordinary situation, when justice requires, any 
requirement of the regulations in this part which 
is not a requirement 
of the statutes may be suspended or waived by the Director 
or the Director’s designee, sua sponte, or on petition of the interested 
party, subject to such other requirements as may be imposed. 
Any petition under this section must be accompanied by the petition 
fee set forth in §
 
1.17(h).

Petitions on appealable matters ordinarily are not 
entertained. See MPEP § 1201.

The mere filing of a petition will not stay the period 
for replying to an examiner’s action which may be 
running against an application, nor act as a stay of 
other proceedings (37 CFR 1.181(f)). For example, if 
a petition to vacate a final rejection as premature is 
filed within 2 months from the date of the final rejection, 
the period for reply to the final rejection is not 
extended even if the petition is not reached for decision 
within that period. However, if the petition is 
granted and the applicant has filed an otherwise full 
reply to the rejection within the period for reply, the 
case is not abandoned.

37 CFR 1.181(f) provides that any petition under 
that rule which is not filed “within two months of the 
mailing date of the action or notice from which relief 
is requested may be dismissed as untimely.” Often, 
the “action or notice from which relief is requested,” 
for example, a requirement for a new drawing, is 
included in the same letter as an action on the merits 
of the claims, the latter having a 3-month period for 
reply. Under such circumstances, if applicant requests 
reconsideration, under 37 CFR 1.111(b), of the 
requirement for a new drawing, the examiner’s action 
on this request, if adverse, establishes the beginning 
of the 2-month period for filing the petition. The petition 
must be filed within this period even though the 
period for reply to the rejection of the claims may 




 

extend beyond the 2-month period. The 2-month 
period for filing timely petitions set forth in 37 CFR 
1.181(f) applies to any petition under 37 CFR part 1, 
except as otherwise provided. A number of sections 
(e.g., 37 CFR 1.377, 37 CFR 1.378, 37 CFR 1.644, 
and 37 CFR 1.740) specify the time period within 
which a petition must be filed (or may be dismissed as 
untimely). The 2-month time period in 37 CFR 
1.181(f) applies to a petition under any section 
(e.g.,
 
37 CFR 1.182 and 37 CFR 1.183) that does not 
specify the time period within which a petition must 
be filed. The 2-month period is not extendible under 
37 
CFR 1.136(a) since the time is within the discretion 
of the  Director of the USPTO.

Form paragraph 10.20 may be used where an insufficient 
fee was filed with a petition or a request.

¶ 10.20 Petition or Request Dismissed, Proper Fee Not 
Submitted

Applicant’s petition or request under 37 CFR [1] filed [2] is 
DISMISSED because the proper petition or processing fee of [3]
required under 37 CFR 1.17 has not been submitted.

Examiner Note:

1.Requests under 37 CFR 1.48 for correcting inventorship 
require a fee as set forth in 37 CFR 1.17(i).

2.Petitions to suspend action under 37 CFR 1.103(a), and to 
withdraw an application from issue under 37 CFR 1.313, require a 
fee as set forth in 37 CFR 1.17(h).

3.Petitions for an extension of time under 37 CFR 1.136(a)
require varying fees. See 37 CFR 1.17(a)(1)-(5).

4.Requests to suspend action under 37 CFR 1.103(b) or (c) 
require a fee set forth in 37 CFR 1.17(i).

5.Requests to defer examination under 37 CFR 1.103(d)
require a fee set forth in 37 CFR 1.17(i) and publication fee set 
forth in 37 CFR 1.18(d).

1002.01Procedure

Petitions, together with the respective application 
files, are sent to the official having the delegated 
authority to decide the petition. The petition may be 
referred to the examiner for a formal statement under 
37 CFR 1.181(c) or for an informal memorandum. 
See MPEP § 711.03(d).

Where a formal statement under 37 CFR 1.181(c) is 
made, a copy thereof is mailed to the petitioner by the 
examiner unless the examiner is otherwise directed, 
and the application file and petition, accompanied by 
the original copy of his or her statement, are returned 
to the official handling the petition. If an informal 
memorandum is requested, no copy thereof is mailed 
to the petitioner by the examiner.

After the decision has been rendered, the decision 
is entered on the “Contents” of the application file 
wrapper which is then returned to the primary examiner, 
who will act in accordance with the decision.

1002.02Delegation of Authority To Decide 
Petitions [R-2]

Petitions to the Director of the USPTO are 
decided in accordance with the following delegation 
of authority.

In any case in which the authority to decide the 
petition has been delegated as indicated in MPEP 
§§
 
1002.02 (b), (f), (g), (j) and (o), a denial of a petition 
may be viewed as a final agency decision. A dismissal 
of a petition, a denial of a petition without 
prejudice, and other interlocutory orders are not final 
agency decisions.

In accordance with 37 CFR 1.181(g), the authority 
to decide petitions to the Director of the USPTO
not otherwise delegated, has been delegated to various 
Office officials. Generally, these officials will decide 
petitions as specified in the following sections for the 
effective operation of the Office. Also listed are certain 
petitions which are not, strictly speaking, to the 
Director of the USPTO but have been committed 
by statute or rule to the designated officials.

The delegation of specific petitions and/or matters 
to the Technology Center (TC) Directors are identified 
in the sections below. Unless specifically provided 
for in the letter of delegation of authority, 
further delegations are not permitted. Any petitions 
and/or matters so delegated by the TC Directors may 
be decided by the TC Directors.

Authority not herein delegated has been reserved to 
the Director of the USPTO and may be delegated 
to appropriate officials on an ad hoc basis.

1002.02(b)Petitions and Requests Decided 
by the Office of the Deputy 
Commissioner for Patent Examination 
Policy [R-2]

All petitions decided by the Office of the Deputy 
Commissioner for Patent Examination Policy other 
than by the PCT Legal Administration (see MPEP 
§
 
1002.02(p)), and inquiries relating thereto, should 
be directed to “Mail Stop Petition, Commissioner 
for Patents, P.O. Box 1450, Alexandria, Virginia 




 

22313-1450,” except as otherwise provided. For 
example, applications for patent term extension under 
35 U.S.C. 156 should be directed to Mail Stop
Patent Ext. 

1. Petitions to revive an abandoned national, nonprovisional 
or provisional patent application, 37 CFR 
1.137 (both unavoidable delay and unintentional 
delay), MPEP §
 
711.03(c).

2. Petitions under 37 CFR 1.183 for waiver or suspension 
of rules not otherwise provided for.

3. Petitions to invoke the supervisory authority of 
the Director of the USPTO under 37 CFR 1.181 in 
matters not otherwise provided for.

4. For utility and plant applications filed on or after 
November 29, 2000, petitions for an unintentionally 
delayed foreign priority claim, 37 CFR 1.55(c), 
MPEP § 201.14(a).

5. For utility and plant applications filed on or after 
November 29, 2000, petitions for an unintentionally 
delayed domestic priority claim, 37 CFR 1.78(a)(3)
and (a)(6), MPEP § 201.11.

6. Petitions for deferment of issuance of patents, 
37 
CFR 1.314, MPEP § 1306.01.

7. Petitions for express abandonment of patent 
applications after payment of the issue fee, MPEP 
§
 
711.01 and MPEP § 1308. 

8. Petitions relating to assignments and issuance of 
patents not otherwise provided for. 

9. Petitions relating to public use proceedings, 
37 
CFR 1.292.

10. Petitions for the withdrawal of attorney under 
37 CFR 1.36 in patent applications involved in proceedings 
before the Office of the Deputy Commissioner 
for Patent Examination Policy.

11. Petitions under 37 CFR 1.182 in matters not 
otherwise provided for.

12. Requests by the examiner to the Board of Patent 
Appeals and Interferences for reconsideration of a 
decision, MPEP § 1214.04.

13. Petitions to review refusal to accept and record 
maintenance fee payment filed prior to the expiration 
of a patent, 37 CFR 1.377, MPEP § 2580.

14. Petitions to accept delayed payment of maintenance 
fee in an expired patent, 37 CFR 1.378, MPEP 
§ 2590.

15. Petitions to review a decision of Technology 
Center Director, 37 
CFR 1.181.

16. Petitions to withdraw a holding of abandonment 
not otherwise delegated, 37 CFR 1.181.

17. Requests to order a Director initiated reexamination 
proceeding, 37 CFR 1.520.

18. Petitions to accept late papers in a reexamination 
proceeding based upon unavoidable or unintentional 
delay, 35 U.S.C. 133 and 35 U.S.C. 41(a)(7).

19. Petitions for access to patent applications under 
37 
CFR 1.14 with the exception of applications 
involved in 
or related to a proceeding before the 
Board of Patent Appeals and Interferences, MPEP 
§
 
103, § 104, and §
 
1901.05.

20. Petitions relating to reexamination proceedings 
and/or reissue proceedings under 37 CFR 1.182 and 
1.183.

21. Petitions relating to merger of reexamination 
and reissue proceedings.

22. Petitions for acceptance of national applications 
without participation of one or more inventors under 
37 
CFR 1.47, MPEP § 409.03.

23. Petitions relating to patent term extension 
37 
CFR 1.710-1.785.

24. Petitions under 37 CFR 1.181 to review a determination 
of the length of the patent term extension 
under 37 
CFR 1.701.

25. Requests for reconsideration of the patent term 
adjustment indicated in the notice of allowance or in 
the patent, under 37 CFR 1.705.

26. Requests for reinstatement of the period of 
patent term adjustment reduced pursuant to 37 CFR 
1.704(b), under 37 CFR 1.705(c).

27. Petitions relating to the filing date of patent 
applications under 37 CFR 1.53 and former 37 CFR 
1.60 and 1.62, MPEP § 506.02.

28. Petitions relating to filing and/or issuance of 
divisional reissue applications, 37 CFR 1.177, MPEP 
§ 1451.

29. Petitions to convert a nonprovisional application 
filed under 37 CFR 1.53(b) to a provisional application 
under 37 CFR 1.53(c) where the nonprovi-
sional application is before the Office of Petitions or 
the Office of Patent Legal Administration.

30. Requests to convert a provisional application 
filed under 37 CFR 1.53(c) to a nonprovisional application 
under 37 CFR 1.53(b) where the provisional 
application is before the Office of Petitions or the 
Office of Patent Legal Administration.




 

31. Petitions for extensions of time under 37 CFR 
1.136(b) in applications before the Office of Petitions 
or the Office of Patent Legal Administration.

32. Petitions, or requests at the initiative of the 
USPTO by someone other than a Technology 
Center Director, to withdraw patent applications from 
issue after payment of the issue fee under 37 CFR 
1.313(b) , MPEP § 1308.

33. Petitions to withdraw patent applications from 
issue after payment of the issue fee under 37 CFR 
1.313(c).

34. Petitions to expunge papers from patent applications 
or patent files under 37 CFR 1.59 which were 
not submitted under MPEP § 724.02 or as part of the 
IDS.

1002.02(c)Petitions and Requests Decidedby the Technology Center Directors 
[R-2]

1. Petitions or requests to reopen prosecution of 
patent applications or to reinstate a rejection after 
decision by the Board of Patent Appeals and Interferences 
under 37 CFR 1.198, where no court action has 
been filed, MPEP §
 
1214.04 and § 1214.07. 

2. Petitions from a final decision of examiner 
requiring restriction in patent applications, 37 CFR 
1.144, MPEP §
 
818.03(c), or holding lack of unity of 
invention in an international application, 37 CFR 
1.477 and 1.489, MPEP § 1875.02.

3. Petitions invoking the supervisory authority of 
the Director of the USPTO under 37 CFR 1.181involving any ex parte action or requirement in a 
patent application by the examiner which is not subject 
to appeal (37 CFR 1.191) and not otherwise provided 
for, as for example:

(a) prematureness of final rejection, MPEP 
§
 
706.07(c);

(b) holding of abandonment, MPEP § 711.03(c);

(c) requirement to cancel “new matter” from specification, 
MPEP § 608.04(c);

(d) relative to formal sufficiency and propriety of 
affidavits under 37 CFR 1.131 (MPEP § 715.08), 
1.132 (MPEP §
 
716) and 1.608, MPEP § 2308 - 
§
 
2308.02;

(e) refusal to initiate an interference under 37 CFR 
1.601(i), MPEP § 2306;

(f) refusal to enter an amendment under 37 CFR 
1.312, MPEP § 714.16(d);

(g) refusal to enter an amendment, 37 CFR 1.127, 
MPEP § 714.19;

(h) refusal to enter an amendment under 37 CFR 
1.111 or 37 CFR 1.115, MPEP § 714.03(a);

(i) resetting period for reply, MPEP § 710.06; and

(j) requirement for information under 37 CFR 
1.105, MPEP § 704.11. 

4. Petitions under 37 CFR 1.113 relating to objections 
or requirements made by the examiners.

5. Petitions for return of original oaths of patent 
applications, MPEP § 604.04(a).

6. Requests for extensions of a set shortened statutory 
period under 37 CFR 1.136(b) in applications 
pending in the Technology Center, MPEP 
§
 
710.02(e).

7. Petitions under 37 CFR 1.193(a) relating to the 
form of the appeal.

8. Petitions concerning appealed patent applications 
or ex parte reexamination proceedings before 
transfer of jurisdiction to the Board of Patent Appeals 
and Interferences (e.g., extension of time under 
37 
CFR 1.136(b) or 37 CFR 1.550(c) for filing an 
appeal brief), MPEP § 1206.

9. Request by applicant for a second or subsequent 
suspension of action in patent applications under 
37 
CFR 1.103, MPEP § 709.

10. Petitions from refusal to issue a Certificate of 
Correction for a patent not involved in an interference, 
37 CFR 1.181, MPEP § 1480 - § 1485.

11. Petitions to reinstate appeals dismissed in the 
Technology Center.

12. Petitions from the denial of a request for reexamination, 
37 CFR 1.515, MPEP § 2248.

13. Requests for extension of time in ex parte
reexamination proceedings pending in the Technology 
Center, 37 
CFR 1.550 (c).

14. Petitions under 37 CFR 1.129(b)(2) traversing a 
restriction requirement made in an application which 
is subject to the transitional restriction provisions, 
MPEP §
 
803.03.

15. Petitions to convert a nonprovisional application 
filed under 37 CFR 1.53(b) to a provisional 
application under 37 CFR 1.53(c) where the nonprovisional 
application is before the Technology Center.

16. Requests for interviews with examiner after a 
patent application has been sent to issue (Notice 
of 
Allowability mailed), MPEP § 713.10, or after 




 

transfer of jurisdiction to the Board of Patent Appeals 
and Interferences.

17. Petitions to expunge papers from patent 
applications or patent files under 37 CFR 1.59 which 
were submitted under MPEP § 724.02 or as part of an 
IDS.

18. Petitions, or requests at the initiative of the 
USPTO, to withdraw patent applications from issue 
before payment of the issue fee, 37 CFR 1.313(a).

19. Requests at the initiative of the USPTO to withdraw 
patent applications from issue after payment of 
the issue fee under 37 CFR 1.313(b), MPEP § 1308.

20. Petitions under 37 CFR 1.91 to admit a model 
or exhibit as part of the record of an application.

21. Requests for the return of models, exhibits, or 
specimen under 37 CFR 1.94.

22. Requests to withdraw as attorney or agent of 
record, 37 CFR 1.36 and MPEP § 402.06.

1002.02(c)(1)Petitions Decided by the 
Director of Technology Center 
3640 [R-2]

In addition to the items delegated to all Technology 
Center Directors under MPEP § 1002.02(c), 
authority to decide the following is delegated to the 
Director of Technology Center 3640:

1. All petitions filed under 35 U.S.C. 267 to extend 
the time for taking action in United States-owned 
applications wherein the invention is important to the 
armament or defense of the United States.

2. All petitions under 37 CFR 1.103(f) to suspend 
action in United States-owned applications wherein 
the publication of the invention might be detrimental 
to the public safety or defense.

Any petitions filed under 35 U.S.C. 267 and/or 
37 
CFR 1.103(f) in any area of the Office must be forwarded 
to the Director of Technology Center 3640 for 
decision thereon.

3. Petitions under 37 CFR 5.12(a) for foreign 
license to file patent applications in foreign countries, 
MPEP § 140.

4. Petitions for rescission of secrecy order, 37 CFR 
5.4, MPEP § 120.

5. Petitions to permit disclosure of subject matter 
under a secrecy order, 37 CFR 5.5(b), MPEP § 120.

6. Petitions for modification of secrecy order, 
37 
CFR 5.5(c), MPEP § 120.

7. Petitions for retroactive foreign filing license, 
37 
CFR 5.25, MPEP § 140.

8. Petitions relating to refusal of request for publication 
of a Statutory Invention Registration, 37 CFR 
1.295, MPEP § 1105.

9. Petitions relating to request for withdrawal of 
request for publication of a Statutory Invention Registration, 
37 
CFR 1.296, MPEP § 1109.

10. Petitions relating to DOE property rights statements 
under 42 U.S.C. 2182.

11. Petitions relating to NASA property rights 
statements under 42 U.S.C. 2457.

12. Petitions relating to foreign filing licenses 
under 35 
U.S.C. 184.

13. Petitions concerning review of security or government 
interest matters not otherwise provided for.

14. Petitions relating to any application under a 
secrecy order pursuant to 35 U.S.C. 181, including 
petitions to expunge subject matter from the application 
to overcome the secrecy order.

1002.02(c)(2)Petitions Decided by the Director 
of Technology Center 
1600 [R-2]

In addition to the items delegated to all Technology 
Center Directors under MPEP § 1002.02(c), 
authority to decide the following is delegated to the 
Director of Technology Center 1600:

1. Petitions regarding sequence rules, 37 CFR 
1.821-1.825.

2. Petitions to make biotechnology applications 
special where applicant is a small entity, MPEP 
§
 
708.02, item XII.

1002.02(c)(3)Petitions Decided by the Director 
of Technology Center 
2900

In addition to the items delegated to all Technology 
Center Directors under MPEP § 1002.02(c), authority 
to decide the following petitions and requests filed in 
design applications is delegated to the Director of 
Technology Center 2900: 

1. Petitions to revive an abandoned national application, 
37 CFR 1.137 (both unavoidable delay and 
unintentional delay), MPEP § 711.03(c).




 

2. Petitions relating to the filing date of patent 
applications under 37 CFR 1.53 and former 37 CFR 
1.60 and 1.62, MPEP § 506.02. 

3. Requests for expedited examination of design 
applications under 37 CFR 1.155, MPEP § 1504.30.

1002.02(d)Petitions and Matters Decided 
by Supervisory Patent Examiners 
[R-2]

1. Entry of amendments under 37 CFR 1.312 which 
embody more than merely the correction of formal 
matters without changing the scope of any claim, 
MPEP § 714.16, § 714.16(d).

2. Approval of reopening prosecution after the filing 
of an appeal brief in order to incorporate any new 
ground of rejection, MPEP § 1208.01.

3. Requests for a Certificate of Correction submitted 
under 37 CFR 1.322 or 1.323 unless the error is 
clearly minor, clerical or typographical, in which case 
it is handled by the Certificate of Correction Branch.

4. Requests for a Certificate of Correction to correct 
a claim even if the request is submitted under 
37 
CFR 1.322.

5. Petitions under 37 CFR 1.324 to correct errors in 
joining inventors in a patent that is not involved in an 
interference, MPEP § 1481.

6. Disapproval of preliminary amendments under 
37 CFR 1.115 or second (or subsequent) supplemental 
amendments (3rd reply) under 37 CFR 1.111, MPEP 
§
 
714.03(a).

7. Letters to an applicant suggesting claims for purposes 
of interference, or the submission of Form PTO-
850, where one or more claims of one application 
would differ from corresponding claims of another 
application. See 37 CFR 1.603 and MPEP § 2303.

8. Amendments presented after decision in an 
appeal by the Board of Patent Appeals and Interferences 
as to which the primary examiner recommends 
entry as placing the application in condition for allowance. 
See MPEP §
 
1214.07.



9. Petitions under 37 CFR 1.84 to accept photographs 
or color drawings in patent applications.

10. Withdrawal from appeal of an application 
remanded by the Board of Patent Appeals and Interferences. 
See MPEP § 1211.

11. Requests for deferral of examination under 
37 
CFR 1.103(d), MPEP § 709.

1002.02(e)Requests Decided by PrimaryExaminers

Requests under 37 CFR 1.48 for correction of 
inventorship in applications.

1002.02(f)Petitions and Matters Decided 
by the Chief AdministrativePatent Judge of the Board of 
Patent Appeals and Interferences


The Chief Administrative Patent Judge is authorized 
to redelegate authority to decide any of these 
petitions or matters to the Vice Chief Administrative 
Patent Judge of the Board of Patent Appeals and 
Interferences.

1. Designation of members of the Board of Patent 
Appeals and Interferences to hear appeals and decide 
interferences, both initially and on request for reconsideration. 
35 U.S.C. 6.

2. Designation of members of the Board of Patent 
Appeals and Interferences to conduct proceedings in 
an interference. 37 CFR 1.610(a).

3. Designation of members of the Board of Patent 
Appeals and Interferences to decide requests for 
reconsideration. 37 CFR 1.640(c).

4. Requests related to superintending the functions 
of the Board of Patent Appeals and Interferences, 
including:

a. Petitions under 37 CFR 1.644 in interferences.

b. Petitions under 37 CFR 1.181, 1.182, and 1.183from actions of the Board of Patent Appeals and Interferences 
or of personnel at the Board of Patent 
Appeals and Interferences.

c. Petitions from a decision under 37 CFR 1.612(a)
granting or denying access by a party to an interference 
to pending and abandoned patent applications. 
MPEP § 103.

d. Petitions for an extension of time for seeking 
rehearing in an ex parte case before the Board of 
Patent Appeals and Interferences.

e. Petitions from a decision under 37 CFR 1.615(b)
authorizing or declining to authorize continued concurrent 
prosecution of an application involved in an 
interference proceeding.




 

f. Petitions from a decision under 37 CFR 1.613(d)
declining to authorize a withdrawal of an attorney or 
agent from representing a party involved in an interference.


g. Petitions from a decision granting or denying a 
request for a certificate of correction under 37 CFR 
1.322 and 1.323 for a patent involved in an interference.


h. Petitions seeking disqualification of an attorney 
or agent under 37 CFR 10.130(b) in an inter partescase pending before the Board of Patent Appeals and 
Interferences.

5. Petitions under 35 U.S.C. 135(c):

a. Petitions under 35 U.S.C. 135(c) and 37 CFR 
1.666(c) to permit the filing of an agreement or understanding 
during the 6-month period subsequent to termination 
of an interference.

b. Petitions under 37 CFR 1.666(b) for access to 
copies of an interference agreement or understanding 
filed under 35 U.S.C. 135(c).

1002.02(g)Petitions Decided by the Administrative 
Patent Judges [R-2]

1. Petitions for access to unopened preliminary 
statements under 37 CFR 1.631.

2. Petitions under 37 CFR 1.615 for concurrent ex 
parte and inter partes prosecution of patent applications, 
MPEP § 2315.

3. Petitions for the withdrawal of attorney under 
37 
CFR 1.36 in patent applications involved in interference 
proceedings under 37 CFR 1.601 - 1.687
before the Board of Patent Appeals and Interferences, 
37 CFR 1.613(d).

4. A request for a Certificate of Correction for a 
patent that is involved in an interference conducted 
under 37 CFR 1.601 - 1.687 presented via a motion 
under 37 CFR 1.635.

5. Motions to correct errors in joining inventors in 
proceedings under 37 CFR 1.601 - 1.687, 37 CFR 
1.634.

See also MPEP § 1002.02(j).

1002.02(i)Petitions Decided by the  Commissioner 
for Trademarks [R-2]

Petitions relating to Trademarks are covered in 
Chapter 1700 of the Trademark Manual of Examining 
Procedure.

1002.02(j)Petitions Decided by the Board 
of Patent Appeals and Interferences 


Requests under 37 CFR 1.197(b) for a rehearing of 
a decision of the Board of Patent Appeals and Interferences. 
MPEP § 1214.03. 

1002.02(k)(1) Petitions and Matters 
Decided by the General Counsel 
[R-2]

1. Requests for confidentiality waiver under 
35 
U.S.C. 122.

2. Petitions (under 37 CFR 1.304(a)(3) or 37 CFR 
2.145(d)) seeking to extend the time for filing a notice 
of appeal to the U.S. Court of Appeals for the Federal 
Circuit or for commencing a civil action seeking judicial 
review of a decision of the Board of Patent 
Appeals and Interferences or the Trademark Trial and 
Appeal Board.

3. Petitions under 37 CFR 10.2(c) from a final decision 
of the Director of Enrollment and Discipline. 

4. Appeals under 37 CFR 10.155 of initial decisions 
of administrative law judges and requests for reconsideration 
under 37 CFR 10.156 in proceedings under 
35 U.S.C. 32 in which the Director of Enrollment and 
Discipline seeks to exclude or suspend a practitioner 
from practice before the Patent and Trademark 
Office.

1002.02(k)(2)Requests Decided by the 
Office of General Law

1. Requests filed under the Freedom of Information 
Act.

2. Petitions requesting review of the FOIA Officer’s 
decision.

1002.02(k)(3)Petitions Decided by the Solicitor


1. Petitions for extension of time in court matters 
35 
U.S.C. 142, 145, and 146.

2. Petitions relating to ex parte questions in cases 
before the Court of Appeals for the Federal Circuit.

The Office of the Solicitor is available to render 
legal advice to any deciding official in connection 
with any petition.




 

1002.02(l)Requests Decided by the Certificates 
of Correction Branch

1. Requests for Certificates of Correction under 
37 
CFR 1.322 or 37 CFR 1.323 except for denials on 
grounds requiring consideration by the Chief Administrative 
Patent Judge or the supervisory patent examiners 
otherwise provided for, MPEP § 1480 - § 1485.

2. Petitions to issue corrected patent, 37 CFR 
1.322(b).

3. Request to change inventorship pursuant to court 
order, 37 CFR 1.324, MPEP § 1481.

1002.02(m)Petitions Decided by the Director 
of Enrollment and Discipline


1. Petitions relating to registration.

2. Requests for limited recognition under 37 CFR 
10.9.

3. Petitions for exceptions to undertakings under 
37 
CFR 10.10(b)(2), MPEP § 1702.

4. Petitions for regrading of registration examinations 
under 37 CFR 10.7(c).

5. Petitions for reinstatement under 37 CFR 10.160.

6. Petitions to suspend the rules under 37 CFR 
10.170.

1002.02(o)Petitions and Other Matters 
Decided by the Deputy  Director 
of the USPTO [R-2]

The authority to take the following actions has been 
delegated to the Deputy  Director of the USPTO.

1. Decide petitions to the Director of the 
USPTO in patent interference proceedings under 37 
CFR 1.644.

2. Decide petitions to the Director of the 
USPTO from actions taken by the Board of Patent 
Appeals and Interferences.



If there is a vacancy in the position of Deputy 
Director of the USPTO, decisions on petitions in 
patent interference cases will be signed by the 
Director of the USPTO.

Upon receipt of a petition and without waiting for 
any opposition, the entire interference file is to be forwarded 
to the Office of the Solicitor. The Solicitor is 
directed to promptly cause a review to be made of the 
petition and to prepare a draft decision for the Deputy 
Director or Director of the USPTO as may be 
appropriate. The Solicitor is authorized to take any 
interlocutory action, i.e., extending times for filing 
oppositions and seeking judicial review, obtaining 
agreement on facts from the parties, etc., as may be 
necessary to promptly dispose of the petition.

1002.02(p)Petitions and Matters Decided 
by the PCT Legal Administrator 
[R-2]

1. Petitions to withdraw the Notice of Acceptance 
and/or filing receipt and indication of the steps necessary 
for completion of the national stage in a national 
application requesting treatment under 35 U.S.C. 371.

2. Petitions for withdrawal of attorney or agent of 
record in proceedings before PCT Operations and/or 
the Office of the PCT Legal Administrator, 37 CFR 
1.36, MPEP §
 
402.06.

3. Petitions for access to an international application 
or a national application (i.e., a national stage 
application or a national application which is continuing 
from an international application) pending in PCT 
Operations and/or the Office of the PCT Legal 
Administrator.

4. Requests under 37 CFR 1.26 or 1.446 for refund 
of fees paid in an international application or in a 
national application (i.e., a national stage application 
or a national application which is continuing from an 
international application) before PCT Operations and/
or the Office of the PCT Legal Administrator.

5. Petitions under 37 CFR 1.182 to convert a 
national application which was filed under 35 U.S.C. 
371 to an application filed under 35 U.S.C. 111(a) or 
to convert a national application which was filed 
under 35 U.S.C. 111(a) to an application filed under 
35 U.S.C. 371.

6. Petitions under 37 CFR 1.181 to withdraw the 
holding of abandonment where the holding was made 
in PCT Operations or in the PCT Legal Office.

7. Petitions under 37 CFR 1.181 to invoke the 
supervisory authority of the  Director of the 
USPTO in circumstances arising in PCT Operations 
and/or the Office of the PCT Legal Administrator 
other than the circumstances set forth in paragraph 6, 
above.




 

8. Petitions under 37 CFR 1.137 (both unavoidable 
delay and unintentional delay) to revive an application 
filed under the Patent Cooperation Treaty (PCT).

9. Petitions under 37 CFR 1.425 to accept the signature 
in an international application on behalf of an 
applicant.

10. Petitions under 37 CFR 1.47 or a submission 
under 37 CFR 1.42  to accept the signature in a 
national stage application on behalf of an applicant.

11. Requests under 37 CFR 1.48 or a submission 
under 37 CFR 1.28 (change of inventorship and small 
entity status, respectively) in a national stage application 
prior to entry into the national stage.

12. Petitions under 37 CFR 1.182 or 1.183 filed in 
an international application relating to filing date matters, 
drawing problems, priority claim issues, Express 
Mail problems, Chapter II Demand problems, issues 
relating to obvious error and issues relating to withdrawal.


13. Petitions under 37 CFR 1.182 or 1.183 dealing 
with circumstances other than those set forth in paragraph 
12, but relating to issues under the PCT.

14. Decisions withdrawing an examiner’s office 
action in an application where the application is not in 
compliance with the PCT provisions of the Treaty, 
U.S. Law or the Regulations.

15. Petitions dealing with PCT related issues in an 
application filed under 35 U.S.C. 111(a) (such as 
applications where there is a potential claim for benefit 
under 35 U.S.C. 365).

16. Petitions to convert a nonprovisional application 
filed under 37 CFR 1.53(b) to a provisional application 
under 37 CFR 1.53(c) where the 
nonprovisional application is before PCT Operations 
and/or the Office of the PCT Legal Administrator.

17. Petitions relating to international applications 
filed under the Patent Cooperation Treaty not otherwise 
provided for.

1002.02(q)Petitions and Requests Decided 
by the Director of Office of 
Initial Patent Examination

1. Requests under 37 CFR 1.48(d) to add the name 
of an inventor in a provisional application.

2. Requests under 37 CFR 1.48(e) to delete the 
name of the person erroneously named as an inventor 
in a provisional application.

3. Petitions to convert a nonprovisional application 
filed under 37 CFR 1.53(b) to a provisional application 
under 37 CFR 1.53(c) where the nonprovisional 
application is before the Office of Initial Patent Examination 
or where the nonprovisional application is 
before the Office of Publications.

4. Requests to convert a provisional application 
filed under 37 CFR 1.53(c) to a nonprovisional application 
under 37 CFR 1.53(b) where the provisional 
application is before the Office of Initial Patent Examination.


5. Petitions under 37 CFR 1.182 to accept omitted 
page(s) or drawing(s) and be accorded a filing date as 
of the date of such submission, or to accept drawings 
for purposes of a patent application publication.

6. Petitions to withdraw holding of abandonment 
where notices of abandonment were mailed by the 
Office of Initial Patent Examination.

7. Petitions for extension of time under 37 CFR 
1.136(b) in applications before the Office of Initial 
Patent Examination.

1002.02(r)Petitions Decided by the Director 
of Office of Patent Publication 
[R-2]

1. Petitions to withdraw holding of abandonment 
where a notice of abandonment has been, or 
could be mailed by the Office of Patent Publication.

2. Petitions for express abandonment to avoid publication 
of the application (should be directed to 
Mail Stop Express Abandonment), 37 CFR 
1.138(c), MPEP § 711.01.

3. Requests to issue patent in name of the assignee 
after payment of the issue fee, 37 CFR 3.81(b), MPEP 
§ 307.

4. Petitions to withdraw the holding that a patent 
has lapsed for failure to pay the balance of the issue 
fee, 37 CFR 1.317.




 

1002.02(s)Petitions and Matters Decided 
by the Special Program Examiners 
in the Technology Centers[R-2]

1. Petitions to make patent applications special 
under 37 
CFR 1.102, MPEP § 708.02:

(a) on the ground of applicant's age or state of 
health, MPEP § 708.02, item III & IV;

(b) a continuation-in-part of an earlier application;

(c) under the Environmental Quality Program, 
MPEP §
 
708.02, item V;

(d) under the Energy Program, MPEP § 708.02, 
item VI;

(e) because the application invokes safety of 
research in the field of Recombinant DNA, MPEP 
§
 
708.02, item VII;

(f) under the Special Examining Procedure for certain 
new applications - accelerated examination, 
MPEP §
 
708.02, item VIII;

(g) superconductivity, MPEP § 708.02, item IX;

(h) inventions relating to HIV/AIDS and cancer, 
MPEP § 708.02, item X;

(i) relating to inventions for countering terrorism, 
MPEP § 708.02, item XI;

(j) on the ground of prospective manufacture, 
MPEP §
 
708.02, item I;

(k) on the ground of infringement, MPEP § 708.02, 
item II; and

(l) for reasons not otherwise provided for.

2. Petitions for withdrawal of attorney from application 
pending in the Technology Centers, 37 CFR 
1.36.

1003Matters Submitted to Technology 
Center Directors [R-2]

The following is a list of matters which are submitted 
to the appropriate Technology Center Director, 
together with a reference to any section of this manual 
where such matters are more fully treated.

1. Requests for a Certificate of Correction in which 
the:

i. request raises a novel issue or about which there 
is some question;

ii. request is for a patent known to be in litigation; 
or

iii. request deals with a legal matter (e.g., the insertion 
of foreign priority data or cross referencing to 
prior U.S. patent applications) unless the file reflects 
that the examiner has already ruled on the matter and 
that failure to print the material was clearly an Office 
error, in which case it will be handled by the Certificate 
of Corrections Branch.

2. Return of papers entered on the “Contents” of the 
file wrapper. See MPEP § 201.14(c), § 604.04(a) and 
§ 719.01.

3. Return of papers containing discourteous 
remarks. See MPEP § 714.19 and § 714.25.

4. Certain rejections on double patenting of divisional 
(or parent) case when restriction or election of 
species has previously been required, MPEP §
 
804.04.

5. Request for patentability report, MPEP 
§
 
705.01(e).

6. Actions which hold unpatentable claims copied 
from a patent for interference purposes where the 
grounds relied upon are equally applicable to the patentee, 
MPEP §
 
2307.02.

7. Interferences between applications neither of 
which is in condition for allowance, MPEP § 2303.

8. Letters requesting jurisdiction from Board of 
Patent Appeals and Interferences of applications 
involved in appeal or interference.

9. Letters to an applicant suggesting claims for purposes 
of interference, the adoption of which by the 
applicant would result in the withdrawal of an application 
from issue, MPEP § 2305.04.

10. Examiner’s answers containing a new interpretation 
of law. See MPEP § 1208.

11. Proposed interferences between applications 
whose effective filing dates differ by more than 6 
months. See MPEP § 2303.

12. Protests filed against issuance of a patent. See 
MPEP § 1901.06.

13. Letters suggesting claims to an application in 
issue for purposes of interference with a patent. See 
MPEP §
 
2305.04.

14. Requests by the examiner to the Board for 
reconsideration of a decision before forwarding to the 
Office of Petitions, MPEP § 1214.04.

15. Second or subsequent suspension of action in 
patent application under 37 CFR 1.103 on examiner’s 
initiative. MPEP § 709.

16. Request by the examiner to withdraw an application 
from issue.




 

17. An unusual fact situation in a patent that establishes:


i. there is a “compelling reason” to order reexamination, 
and

ii. at least one claim in the patent is prima facieunpatentable over prior patents and/or printed publications. 
See 37 CFR 1.520, MPEP § 2239.

18. Applications containing examiner’s answers 
lacking the appropriate indication that an appeal conference 
was held. See MPEP § 1208.

19. Applications identified by the examiner as 
containing “offensive” subject matter.

All unusual questions of practice may be referred to 
the Technology Center Directors.

1004Actions Which Require the Attention 
of a Primary Examiner

There are some questions which existing practice 
requires the primary examiner to be personally 
responsible for. The following actions fall in this category:


Final rejection (MPEP § 706.07).

Proposing an interference (MPEP § 2309).

Disposition of an amendment in an application in 
interference looking to the formation of another 
interference involving that application (MPEP 
§
 
2364.01).

Calling Administrative Patent Judge’s attention to 
a discovered reference which makes a claim corresponding 
to a count unpatentable (37 CFR 1.641, 
MPEP § 2341). 

Rejection of a previously allowed claim (MPEP 
§
 
706.04).

Classification of allowed cases (MPEP § 903.07).

Holding of abandonment for insufficient reply 
(MPEP §
 
711.03(a)).

Suspension of examiner’s action (MPEP § 709).

Treatment of newly filed application which obviously 
fails to comply with 35 U.S.C. 112 (MPEP 
§
 
702.01).

Consideration of the advisability of a patentability 
report (MPEP § 705.01(a)).

Withdrawal of final rejection (MPEP § 706.07(d)
and §
 
706.07(e)).

All examiner’s answers on appeal (MPEP § 1208). 

Decision on reissue oath or declaration (MPEP 
§
 
1414).

Decision on affidavits or declarations under 
37 
CFR 1.131 (MPEP § 715.08) and under 
37 
CFR 1.132 (MPEP § 716).

Decision as to acceptance of amendments, statements, 
and oaths or declarations filed under 
37 
CFR 1.48 (MPEP § 201.03).

International Preliminary Examination Reports 
(MPEP § 1879).

For a list of actions that are to be submitted to the 
Technology Center Directors, see MPEP §
 
1002.02(c)
and § 1003.

1005Exceptions to Partial Signatory Authority 
[R-2]

Examiners who are delegated partial signatory 
authority are expected to sign their own actions with 
the exception of the following actions which require 
the signature of the primary examiner:

Allowances (MPEP § 1302.13).

Examiner’s amendments (MPEP § 1302.04).

Quayle actions (MPEP § 714.14).

Final rejections (MPEP § 706.07 and § 803.01).

Withdrawal of final rejection (MPEP § 706.07(d) 
and (e)).

Actions on amendments submitted after final 
rejection (MPEP § 714.12).

Examiner’s answers on appeal (MPEP § 1208).

Initiation of an interference (MPEP § 2309).

Actions suggesting claims for interference purposes 
(MPEP § 2305).

Actions involving copied patent claims (MPEP 
§
 
2307).

Actions reopening prosecution (MPEP § 1214.07).

Requests for withdrawal from issue (MPEP 
§
 
1308).

37 CFR 1.312 amendments (MPEP § 714.16).

Rejection of previously allowed claim (MPEP 
§
 
706.04).

Final holding of abandonment for insufficient 
reply (MPEP § 711.03(a)).

Actions based on affidavit or declaration evidence 
(37 
CFR 1.131 and 1.132 (MPEP § 715.08 and 
§
 
716)).

Suspension of examiner’s action (MPEP § 709).

Reissue applications (decisions on reissue oath or 
declaration) (MPEP § 1444).




 

Requests for an extension of time under 37 CFR 
1.136(b) (MPEP § 710.02(e)).

Reexamination proceedings (MPEP § 2236).

International Preliminary Examination Reports 
(MPEP § 1879).