USPTO Automates Filing of Patent Petitions

The United States Patent and Trademark Office announced today that they would be automating the filing of and decision making process for eight patent- related petition types through a  new e-Petition system.  The eight patent related petition types cover approximately one-third of the work of the Petitions Office and join two other types of patent petitions that are already decided electronically – petitions to make special on the basis of age and petitions to accept unintentionally delayed payment of the maintenance fee.

The eight patent related petition types include:

1. Withdrawal of attorney
2. Withdraw from issue after payment of the issue fee
3. Withdraw from issue after payment of the issue fee under 37 CFR 1.313(c)
4. Withdraw from issue after payment of the issue fee under 37 CFR 1.313(c)(1) or (2) when patent number is assigned
5. Withdraw from issue under 37 CFR 1.313(c)(3)
6. Petition to accept late payment of issue fee – unintentional standard under 37 CFR 1.155(c) or 37 CFR 1.316
7. Petitions for revival under 37 CFR 1.137(f)
8. Petitions to revive an abandoned application under 37 CFR 1.137(b) for continuity purposes only

“We’ve heard complaints that it takes too long to get a decision from the Petitions Office,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “To address this issue, we’re processing and issuing more petition decisions electronically, which will deliver better service to patent applicants and help improve efficiency at the USPTO.”

The automated petition process uses the USPTO’s new e-Petition system. With e-Petition the data is input through a secure web interface and the petition is decided automatically, eliminating months of waiting for these types of petitions to be docketed, decided and uploaded into Public PAIR (Patent Application Information Retrieval).

Recently I wrote about how an individual who I specifically declined to represent filed a Power of Attorney naming me as the representative.  See Change Needed to USPTO Power of Attorney Form.  I have to wonder whether an automatically decided petition would have been at all effective.  Yes, a petition to withdraw is one of those types of petitions that one can now use e-Petitions to file, but there are 3 specific certifications that need to be made on a petition to withdraw.  They are:

1. I/We have given reasonable notice to the client, prior to the expiration of the response period, that the practitioner(s) intend to withdraw from employment.
2. I/We have delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled.
3. I/We have notified the client of any responses that may be due and the time frame within which the client must respond.

There is a warning before these statements on the form explaining, “If a box is left unchecked, the request will likely not be approved.”  So if these petitions are going to be determined automatically my guess is that not checking all three boxes would result in a denial.  The trouble?  When a client files a power of attorney without your permission and with you knowing nothing about the case you cannot check all 3 boxes in an honest way because you don’t know anything about the case, and because the person was never a client.

According to the Patent Office, petitioners will have more control over when their petitions are filed and answered. This is especially advantageous for critical petitions, such as petitions to withdraw from issue. Electronic petition decisions will also decrease the need for renewed petitions and reduce the inventory of petitions awaiting decision, freeing up resources currently used to decide these eight types of petitions.

I can certainly see the benefit to having an automated system where petitions are routinely granted if certain boxes are checked and statements made, and I am in favor of any and all efforts to streamline the patent process.  Streamlining is good for innovators, patent attorneys and for the Patent Office.  It will allow the USPTO to do more with the resources they have and should shorten the length of time an application remains pending.  Such a system will  also free up the staff in the Office of Petitions to focus on other petitions.  Notwithstanding, I wonder what will become of automatic petitions that are denied.  Presumably if the automatic petition gets denied there will be some way to challenge, but will you wind up in some bureaucratic black hole where the taint of an automatic denial becomes difficult to purge?  Probably not, but this is something to watch.

For additional details on e-Petitions, please see the Frequently Asked Questions at http://www.uspto.gov/patents/process/file/efs/guidance/ePetition-FAQs.jsp.

For non-press inquiries, contact Anthony Knight at [email protected].