Petitioning is like petitioning before the Patent Office on issues that are not necessarily related to the patentability of your claim. The Petition Office receives petitions that are determined by the Petition Office administrator, not by the Examiner.
what do you petition?
As a rule of thumb, objections from the Office are petitionable and refusals from the Office are appealable. Rejections under Sections 101, 102, and 103 have legal implications and must be appealed ex parte to the Patent Trial and Appeal Board (PTAB). But otherwise, if the dispute with the examiner has not progressed and the examiner does not withdraw the objection, you will petition those issues.
Therefore, you may file drawing objections, specification objections, or other formal objections. Another example is passing inappropriate restrictive requirements. Even if you do not agree to the restrictions in order to proceed with the prosecution, you still have to choose the restrictions, but you can go through them and petition them if you want. The means-plus-function interpretation of your claims is another petitionable issue. So you petition those issues.
The United States Patent and Trademark Office (USPTO) provides a list of petitionable matters categorized by filing stage and whether the application has been allowed or issued.
Petition requirements
Petitions must be in writing (you can’t make a video, they won’t watch it). A statement of fact must be made. Obviously you have to pay a fee as well (USPTO).This is the part you really need to remember – you have 2 months From the notification of the issue you are about to file a petition for. So this is very important if you’re dealing with something you want to petition in Office Actions. We can usually respond to office actions within 3 months without an extension fee. However, in order for the petition to be considered in a timely manner, the petition must be filed within two months of the notice of rejection.
Also, the petition no Suspend the statutory period for responding to Office Actions, as they are not considered full responses to Office Actions. So if you have an Office Action that cites only a single objection to a drawing, and you are disputing the drawing, even if you file a petition, you must file a response to the Office Action that traverses the only objection. . For that one drawing objection, you are not addressing other issues. To stop running the statutory clock, you must act under CFR 1.111 or 1.116 (or RCE as appropriate). Otherwise, you risk your application being abandoned in six months.
So this is very different from Appeal. Filing a notice of appeal suspends the continuation of that statutory period. Petition doesn’t do that. So, even if you are petitioning, always remember to be fully responsive to the Office’s actions.
Petition in case of Sailor
When Stephen Thaler filed two applications with the USPTO, naming his AI machine, DABUS, as the sole inventor, he filed the following documents with the disclosure:
- ADS,
- Inventor Statement,
- Inventor’s Oath and Declaration
- work, homework.
In his ADS, Dr. Thaler listed DABUS as his first name and wrote “an invention generated by artificial intelligence” under “surname”. In his “Inventor Statement,” he clarified that the inventor of the claimed subject matter was his AI machine. He then executed the inventor’s oath and declaration on his AI machine’s behalf. This is because it “lacked legal personality or capacity to carry out” the Declaration. And Dr. Thaler assigned himself all rights to the patent on behalf of his machine.
In response, the USPTO issued a “Notice to File Missing Parts of Nonprovisional Application.” And the notice had a statutory period of two months to respond.
So which of the documents submitted by Thaler (ADS, inventor’s statement, inventor’s oath, and assignment) were problematic? All of them? What was his petition actually about?The mainstream media says he petitioned to be the inventor of his AI, but it really wasn’t.
Watch the video to learn more. Also, keep an eye out for examples of petitions you are likely to file before the USPTO and the arguments you might be able to make.
