MPEP § 1002.02(p) — Petitions and Matters Decided by the Director of International Patent Legal Administration

Ninth Edition, Revision 01.2024 · last revised R-01.2024

1. Petitions to withdraw the Notice of Acceptance and/or filing receipt and indication of the steps necessary for completion of the national stage in a national application requesting treatment under 35 U.S.C. 371.

2. Petitions for the withdrawal of attorney or agent of record in proceedings before PCT Operations and/or International Patent Legal Administration, 37 CFR 1.36, MPEP § 402.06.

3. Petitions for access to an international application or a national application (i.e., a national stage application or a national application which is continuing from an international application) pending in PCT Operations and/or International Patent Legal Administration.

4. Requests under 37 CFR 1.26 or 1.446 for refund of fees paid in an international application or in a national application (i.e., a national stage application or a national application which is continuing from an international application) before PCT Operations and/or International Patent Legal Administration.

5. Petitions under 37 CFR 1.182 to convert a national application which was filed under 35 U.S.C. 371 to an application filed under 35 U.S.C. 111(a) or to convert a national application which was filed under 35 U.S.C. 111(a) to an application filed under 35 U.S.C. 371.

6. Petitions under 37 CFR 1.181 to withdraw the holding of abandonment where the holding was made in PCT Operations or in International Patent Legal Administration.

7. Petitions under 37 CFR 1.181 to invoke the supervisory authority of the Director of the USPTO in circumstances arising in PCT Operations and/or International Patent Legal Administration other than the circumstances set forth in paragraph 6, above.

8. Petitions under 37 CFR 1.137 (unintentional delay) to revive an application filed under the Patent Cooperation Treaty (PCT).

9. Petitions under pre-AIA 37 CFR 1.47 or a submission under pre-AIA 37 CFR 1.42 to accept the signature in a national stage application on behalf of an applicant.

10. Requests under 37 CFR 1.48 or a submission under 37 CFR 1.28 (change of inventorship and small entity status, respectively) in a national stage application prior to entry into the national stage.

11. Petitions under 37 CFR 1.182 or 1.183 filed in an international application relating to filing date matters, drawing problems, priority claim issues, Priority Mail Express^® problems, Chapter II Demand problems, issues relating to obvious mistakes and issues relating to withdrawal.

12. Petitions under 37 CFR 1.182 or 1.183 dealing with circumstances other than those set forth in paragraph 11, but relating to issues under the PCT.

13. Decisions withdrawing an examiner’s office action or other action in an application where either the application or the action is not in compliance with the provisions of the PCT, as implemented under U.S. Law or the Regulations.

14. Requests under PCT Rule 26bis.3, 37 CFR 1.55, or 37 CFR 1.78 to restore the right of priority or domestic benefit in an international application filed under the PCT, a national stage application under 35 U.S.C. 371, or in an application which claims the benefit of or priority to an international application filed under the PCT.

15. Petitions for the acceptance of a delayed priority claim under 37 CFR 1.55 filed in a national stage application under 35 U.S.C. 371 or in an application which claims the benefit of or priority to an international application filed under the PCT.

16. Petitions for the acceptance of a delayed domestic benefit claim under 37 CFR 1.78 filed in a national stage application under 35 U.S.C. 371 or in an application which claims the benefit of or priority to an international application filed under the PCT.

17. Petitions dealing with PCT related issues in an application filed under 35 U.S.C. 111(a) (such as applications where there is a potential claim for benefit under 35 U.S.C. 365).

18. Petitions for extensions of time under 37 CFR 1.136(b) in applications before the International Patent Legal Administration.

19. Petitions relating to international applications filed under the Patent Cooperation Treaty not otherwise provided for.

20. Requests for participation in a Patent Prosecution Highway program (www.uspto.gov/PPH).

21. Petitions to Make Special in accordance with international agreements with foreign patent offices.

22. Requests for a certificate of correction that affects related U.S. application data or foreign priority data in a patent resulting from an application filed as a national stage application under 35 U.S.C. 371 or which claims the benefit of or priority to an international application filed under the PCT.

23. Petitions for the late filing of a certified copy of foreign application under 37 CFR 1.55(f) dealing with PCT related issues (such as where the petition, filed in a national stage application, indicates that the certified copy was furnished in the international stage).

24. Decisions to withdraw national stage applications under 35 U.S.C. 371 from issue either under 37 CFR 1.313(a) before payment of the issue fee or under 37 CFR 1.313(b) after payment of the issue fee for failure to comply with 35 U.S.C. 371(c).

25. Petition under 37 CFR 1.1023(b) to accord the international design application a filing date in the United States other than the date of international filing.

26. Petitions under 37 CFR 1.1051 to excuse the failure to act within prescribed time limits under the Hague Agreement.

27. Petitions under 37 CFR 1.1052 to convert an international design application to a design application under 35 U.S.C. chapter 16.

28. Decisions withdrawing an examiner’s office action or other action in an application where either the application or the action is not in compliance with the provisions of the Hague Agreement, as implemented under U.S. Law or the Regulations.

29. Petitions under 37 CFR 1.181, 1.182, or 1.183 in international design applications relating to issues under the Hague Agreement.

30. Decisions relating to applications filed under the Hague Agreement not otherwise provided for.