E-filing patent petitions – just do it
By Michael A. Koptiw // September 15, 2011
There aren’t any no-brainers in patent law, but the USPTO’s ePetitions system comes close. In March, the USPTO began an automated filing and decision process for eight patent-related petitions through a new system called ePetitions. Not only does ePetitions allow practitioners to file the petitions electronically, it provides an immediate decision.
Certain patent-related petitions require only a formal review, that is, if all the parts of the petition have been submitted correctly, the petition is granted. ePetitions is an online system that ensures that all of the required items are properly submitted. It provides instant error messages if anything is missing. Thus, once the forms are filled out on the screen, ePetitions automatically grants the petition.
In light of the time savings associate with ePetitions, clients may want to ask their counsel if they are still paper filing petitions for the supported petition types. The PTO has reported that on average non-web-based petition filings can take up to 30 days to be decided and 38% are dismissed for insufficient or incorrect information. And, having an automatic petition grant can reduce delays in the restoration of patent rights, initiate the revival of an abandoned application to save patent term adjustment time, and reduce prosecution time when it’s necessary to withdraw a patent from issue. Since March ePetitions has taken off and accounts for nearly 25% of submissions for the available petition types.
The eight Web-based ePetitions are:
1. Request for Withdrawal as Attorney or Agent of Record (37 CFR 1.36)
2. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2))
3. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3))
4. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2) with Assigned Patent Number)
5. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3) with Assigned Patent Number)
6. Petition to Accept Late Payment of Issue Fee – Unintentional Late Payment (37 CFR 1.137(b))
7. Petition for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))
8. Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(b))
If you have any questions about ePetitions, feel free to contact the author or any attorney at Condo Roccia Koptiw LLP.