Exemplary Petition Practice

Petitions efficiently address procedural issues at the US Patent and Trademark Office (USPTO).  In this regard, petitions differ from appeals, which are the proper (if inefficient) avenue for addressing substantive issues.  So, what would an example of the petition process look like?

Imagine a prosecution in which a non-final Office Action rejects independent Claims 1 and 2 as anticipated by a reference.  Let’s assume Claim 1 is broader than Claim 2: maybe Claim 1 is a subcombination claim, and Claim 2 is a combination claim.

In response to the non-final Office Action, the Applicant amends Claim 1 to overcome the rejection.  However, because Claim 2 is narrower, the Applicant maintains the scope of Claim 2.

A final Office Action then rejects independent Claims 1 and 2 as obvious over a combination of references.  That is, the Examiner has introduced a new ground of rejection for Claim 2, although Applicant did not amend Claim 2.  Accordingly, the finality of the Office Action is improper.  MPEP 706.07(a).

At this point, the Applicant should conduct an Examiner interview and request withdrawal of the finality of the Office Action.  However, it is not always possible to conduct an interview, particularly after a final Office Action.  Further, in our experience, Examiners seldom agree during interviews to withdraw the finality of an Office Action, even when withdrawal is clearly proper.

So, the Applicant then should ask the Examiner in writing to withdraw the finality of the Office Action.  For example, the Applicant might file an Amendment asking for withdrawal of the finality of the Office Action and entry of the Amendment.

If the Examiner does not withdraw the Office Action’s finality and issues an Advisory Action, then the Applicant should file a petition within 2 months of the issuance of the Advisory Action.  Such a petition should be successful: petitions have much less uncertainty than appeals.

There is no governmental fee for such a petition.  So, a petition in this situation can likely save a significant amount of money over a Request for Continued Examination (RCE).

Of course, petition practice can be significantly more strategic than the above example.  So, if Modal PLLC can assist you with petition practice, please contact us.

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