(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 Patent Trial and Appeal Board 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 involving action of the Patent Trial and Appeal Board, see § 41.3 of this title.
(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.
[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969; 47 FR 41278, Sept. 17, 1982; 49 FR 48452, Dec. 12, 1984; 65 FR 54676, Sept. 8, 2000; 65 FR 76774, Dec. 7, 2000; 69 FR 50000, Aug. 12, 2004; 77 FR 46625, Aug. 6, 2012]
Notes of Decisions
Nippon Shinyaku Co. v. Iancu, 369 F. Supp. 3d 226 (D.C. Cir. 2019).
· cites it 5× “705(d) by submitting a petition under 37 C.F.R. § 1.181 (f) ("Rule 1.181(f)") "within two months of the mailing date of the action or notice from which relief is requested[.”
Target Training Int'l, Ltd. v. Lee, 1 F. Supp. 3d 927 (N.D. Iowa 2014).
· cites it 4× “” Amended Complaint, ¶¶ 37-40, Exhibit 3 (Decision On Petitions Under 37 C.F.R. § 1.181 at 2). On December 7, 2012, while TTI’s “Rule 181 Petition” was pending, the PTO issued an order granting IPReex of the '372 patent in the '2307 proceeding.”
Star Fruits s.n.c. v. United States, 393 F.3d 1277 (Fed. Cir. 2005).
· cites it 4× “Pursuant to 37 C.F.R. § 1.181 , Star Fruits petitioned the Director to require the Examiner to accept Star Fruits's Response as complete.”
Godtfredsen v. Banner, 598 F.2d 589 (C.C.P.A. 1979).
· cites it 4× “Godtfredsen thereupon petitioned the Commissioner, under 37 CFR 1.181, 1 re *591 questing that he invoke his supervisory authority and reverse the examiner’s decision denying the Motion to Substitute Count A.”
Zhengxing v. U.S. Pat. & Trademark Off., 579 F. Supp. 2d 160 (D.D.C. 2008).
· cites it 4× “Instead, Zhengxing appears to contend that she raised her unlawful abandonment claim by petition under the administrative process set forth in 37 C.F.R. § 1.181 5 and that should have been *165 sufficient.”
Janssen Pharmaceutica, N v. v. Kappos, 928 F. Supp. 2d 102 (D.D.C. 2013).
· cites it 5× “Parties may further appeal the patent term adjustment finding to the Director under 37 C.F.R. § 1.181 (a) (indicating a petition may be taken to the Director “[f]rom any action or requirement of any examiner in the ex parte prosecution of an application .”
Exela Pharma Sciences, LLC v. Lee, 781 F.3d 1349 (Fed. Cir. 2015).
· cites it 2× “On November 30, 2011 Exela filed the subject petition in the PTO, under the APA and 37 C.F.R. §§1.181 , 1.182, and 1.183, challenging the PTO’s revival of the patent application that led to the ’218 patent.”
Eastman Kodak Co. v. Gerald J. Mossinghoff, Comm'r of Patents & Trademarks, 704 F.2d 1319 (4th Cir. 1983).
· cites it 3× “37 C.F.R. § 1.181 (1982). There is, however, no specific provision in the patent statutes or rules of practice permitting a protestor to seek review by the Board of Appeals, or in the federal courts, of an unfavorable decision of the Commissioner.”
In Re Kenneth L. Berger, 279 F.3d 975 (Fed. Cir. 2002).
“Because the PTO had refused to enter the amendments submitted by Berger after final rejection of the claims, the § 112 rejections of claims 1-4 and 8-20 remained uncontested and were sustained by the Board. The Board further found that the examiner had refused entry of the…”
Godtfredsen v. Banner, 503 F. Supp. 642 (D.D.C. 1980).
· cites it 2× “Plaintiffs petitioned the Commissioner for review of the examiner’s denial of their motion to substitute Count A as the interference count under 37 C.F.R. §§ 1.181 and 1.244. Although no interlocutory appeal of such decisions made during the motions period is available, the…”
In Re Arnold B. Serenkin, 479 F.3d 1359 (Fed. Cir. 2007).
“” Serenkin also filed a petition under 37 C.F.R. §§ 1.181 and 1.182 for retroactive award of an earlier international fifing date in the Office of the PCT Legal Administrator.”
Dominique Dubost v. U.S. Pat. & Trademark Off., 777 F.2d 1561 (Fed. Cir. 1985).
“” Counsel immediately resubmitted a signed check along with a petition to the Commissioner under 37 C.F.R. § 1.181 seeking the October 8 filing date.”
— 37 C.F.R. § 1.181(a) — 1 case
— 37 C.F.R. § 1.181(a)(3) — 1 case
— 37 C.F.R. § 1.181(f) — 1 case
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