In some circumstances, patent applicants may petition the Patent Office to suspend non-statutory rules under 37 CFR § 1.183. As the text of the rule indicates, the Patent Office will only grant such petitions “[i]n an extraordinary situation, when justice requires,” but does not clarify the type of situations where this requirement would be met. Specifically, 37 CFR Section 1.183 provides:
In an extraordinary situation, when justice requires, any requirement of the regulations in this part which is not a requirement of the statutes may be suspended or waived by the Director or the Director’s designee, sua sponte, or on petition of the interested party, subject to such other requirements as may be imposed. Any petition under this section must be accompanied by the petition fee set forth in § 1.17(f).
To provide further insight into the practices of the Patent Office, the present analysis reviews § 1.183 petition decisions between 5/1/2020 and 5/11/2021. These decisions were gathered after a FOIA request to the Patent Office.
37 CFR § 1.183 Petitions – Decisions from 5/1/2020 – 5/11/2021
Summary of Petitions Granted
As the summary chart above shows, statistical analysis of petitions granted or dismissed is unlikely to reveal any trends given the small sample size. At a minimum, one cannot dismiss the option to file a petition as unlikely to succeed. The Patent Office grants a significant proportion of the petitions filed. As the following discussion indicates, there are some consistent scenarios in which petitions are granted.
Granted Petitions after Patent Issuance
Notably, eleven of the twelve granted pertained to reconsideration of term adjustment after issuance. The § 1.183 petition waived the timing issue of the certification statement under 37 CFR § 1.704(d), and thus the petitioners were permitted acceptance of a certification statement after the filing of the Information Disclosure Statement. The Office found the extraordinary situation to arise from the lack of specificity of § 1.704(d) regarding the necessity to submit duplicative statements in subsequent IDS submissions The remaining petition after issuance was granted to correct an assignee’s name after issuance—although treated under 37 CFR 3.81(b).
Granted Petitions on Applications that Eventually Issued as Patents
Eight granted petitions were for applications that subsequently issued as patents. Of those eight petitions, six were granted in situations involving a joint research agreement—specifically to waive the requirement in 37 CFR § 1.321(d) that the reference being disclaimed over in the terminal disclaimer be disqualified as prior art. The Office found the relationship between § 1.321(d) and 35 U.S.C. 102(c) in joint research agreements to create an “extraordinary and unjust situation” under 35 U.S.C. 102(a)(2). Thus, § 1.183 waiver was necessary to remedy the situation. Another petition granted waiver of sequence disclosure under 37 CFR § 1.821 as the contrived sequence shown in the example did not qualify as prior art and listing it would contaminate the sequence listing database. The final petition granted waiver of the single signature requirements of 37 CFR 1.32(b)(4) as the applicants had divergent interests in the subject matter of the application, which would create an “unjust situation” if either party were able to unilaterally extinguish the property rights of the other.
Petitions of Other Pending/Abandoned Applications
Of the twenty-one petitions granted, fourteen concerned the waiver of the § 1.321(d) with respect to the same joint research agreement situation as explained above. Other petitions were granted in situations where the applicants were unable to reach all inventors after sufficient attempts, which permitted completion of power of attorney filings and correct identification of applicants on the original ADS.
The Patent Office found a situation to be “extraordinary” when: (1) the applicable rules either created the situation, (2) the rules failed to provide the necessary remedy, and (3) compliance with the rule was impossible.
Summary of Dismissed Petitions
For dismissed petitions, a few trends appear in this sample set. The dismissed petitions sought waiver of a much broader range of rules, so looking specifically into the three categories discussed above is not as informative. Rather, the reasoning for the dismissals may be broken down into a few groups.
Correction Possible Under Different Rule
The most common reason for dismissal of § 1.183 waiver was when the Office found that the applicant’s desired correction could be made under a different rule. Of the sixty-one total petitions dismissed, fifteen were denied for this reason. The Office was sometimes abrupt in this dismissal—simply highlighting the lack of an “extraordinary situation, where justice requires waiver of the rules” because the applicant had different avenues for the relief sought.
A second common reason for dismissal was a finding of insufficient evidence to show an “extraordinary situation.” Applicants needed to provide adequate explanation to support such a finding, noting that a previous failure to comply with a rule is not sufficient evidence to show an “extraordinary situation.”
Failure to Supply Accompanying Materials
Some of the § 1.183 dismissals were straightforward procedural defects that do not merit further discussion. For example, denials where the applicant had failed to provide the requisite fee or accompanying document.
Distinct from dismissal when correction was possible under a different rule, the Patent Office also understandably dismissed petitions when there was no rule that needed to be waived. Rather, the applicant had incorrectly believed that they did not comply with a rule and therefore sought unnecessary waiver, or the relief sought had been previously granted.
When considering filing a 37 CFR § 1.183 petition for suspension of the rules, there are a few preliminary issues that an applicant may want to consider.
First, check to see if waiver is actually necessary, whether the remedy sought can be granted under another rule or if there is anything to remedy at all.
Second, provide adequate evidence supporting why waiver is necessary—i.e. why an extraordinary and unjust situation exists by establishing the: (1) the applicable rules that created the situation, (2) the failure of the rules to provide the necessary remedy, or (3) inability to comply with the on-point rule.
Third, and most obvious, comply with the procedural requirements and file a complete petition. The Patent Office is quick to dismiss any incomplete petitions.
*Bryan B. Thompson, a summer associate in the Washington, D.C. office, contributed to this blog post.