04.04.11 | Eight New e-Petitions Added to EFS-Web

The United States Patent and Trademark Office (USPTO) announced the addition of eight new e-Petitions to EFS-Web. In addition to the two existing e-Petitions, Petition to Make Special Based on Age (37 CFR 1.102) and the Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c)), the following e-Petitions will be available to users beginning on March 27, 2011:

  • Request for Withdrawal as Attorney or Agent of Record and Change of Correspondence Address (37 CFR 1.36)
  • Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2))
  • Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313 (c)(3))
  • Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2)) with Assigned Patent Number
  • Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3)) with Assigned Patent Number
  • Petition to Accept Late Payment of Issue Fee – Unintentional Late Payment (37 CFR 1.316)
  • Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))
  • Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(b))

Unlike the existing e-Petitions, which require a fillable PDF petition form to be completed and attached in EFS-Web, the new e-Petitions are filled out completely online through Web-based screens. These e-Petitions are then auto-processed and granted immediately upon submission, if the petitioner meets all of the requirements.
By using e-Petition, petitioners will also now 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. Further, deciding petitions electronically will decrease the need for renewed petitions, since petitioners will know instantly whether all requirements have been met.

The e-Petition to Withdraw from Issue after Payment of the Issue Fee must be filed and granted by the USPTO prior to Midnight (Eastern Time) on the Monday before the Issue Date.

The online e-Petition option for a Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(b) may only be filed in an existing U.S. national application filed under 35 U.S.C. 111(a) or U.S. national stage application under 35 U.S.C. 371. Therefore, this option is not available for reviving a PCT international application for purposes of continuity with a later filed 35 U.S.C. 111(a) application.

Similarly, the online e-Petition option for a Request for Withdrawal as Attorney or Agent of Record and Change of Correspondence Address (37 CFR 1.36) is not available for PCT international applications, including those filed in the United States Receiving Office (RO/US).