Petitions Examiner
Job Description
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Petitions Examiner
GM-1220-15

Duties:

Independently evaluates petitions to the Commissioner of Patents and Trademarks, which have been so delegated, and prepares decisions thereon. Incumbent signs the following decisions or prepares decisions for signature by the Director of the Office of Petitions and/or the Deputy Assistant Commissioner for Patent Policy and Projects: (1) any action or requirement made by an employee of the PTO under applicable regulations or established procedures which are not subject to appeal on the matter of patentability, or (2) failure of an applicant, attorney or assignee to take timely and appropriate action under applicable regulations or established procedures. The petition decision can be the Final Agency Action, similar in nature to a decision of the Board of Patent Appeals and Interferences. A number of decisions on petition made by or recommended by incumbent result in essentially final disposition of substantial property rights.

  • Prepares for own signature decisions granting or dismissing relief in the following types of petitions: (1) petitions to revive abandoned applications (35 USC 41,35 USC 133,35 USC 111,37 CFR 1.137); (2) petitions to accept late payment of the issue fee (35 USC 41,35 USC 151,37 CFR 1.155, 37 CFR 1.316); (3) petitions to accept late payment of the maintenance fee (35 USC 41,37 CFR 1.377,37 CFR 1.378); (4) petitions to withdraw allowed applications from issue (37 CFR 1.313); (5) petitions to defer issuance of allowed applications (37 CFR 1.314); (6) petitions to change Office record (37 CFR 1.182); (7) petitions to issue a Duplicate Letters Patent (37 CFR 1.182); and (8) petitions to suspend or waive the regulations as set forth at 1059 O.G. 4 (37 CFR 1.183).

  • Prepares for own signature decisions dismissing relief because the record is inadequate to support a dispositive decision in the following types of petitions: (1) petitions to review the decision of a Group Director (37 CFR 1.181 ); (2) petitions to decide a question not specifically provided for by the regulations (37 CFR 1.182); and (3) petitions to suspend or waive regulations (37 CFR 1.183).

  • Prepares decisions on petitions in final form for signature by the Director of the Office of Petitions and/or the Deputy Assistant Commissioner for Patent Policy and Projects. These include: (1) decisions granting or denying relief on petitions to suspend or waive regulations (37 CFR 1.182); (2) decisions granting or denying relief on petitions to review the decision of a Group Director (37 CFR 1.181 ); (3) decisions granting or denying relief on petitions to decide a question not specifically provided for (37 CFR 1.182) and (4) decisions denying relief on all other petitions delegated by the Commissioner to the Office of the Deputy Assistant Commissioner for Patent Policy and Project.

  • In view of the fact that the Deputy Assistant Commissioner for Patent Policy and Projects personally signs or reviews only about 5% of the petitions handled by the Office of the Deputy Assistant Commissioner for Patent Policy and Projects, incumbent effectively establishes petitions policy in many areas and accordingly, must be thoroughly familiar with the policies.

  • Incumbent is looked to for final and expert advice in the petitions area by the Director of the Office of the Petitions and the Deputy Assistant Commissioner for Patent Policy and Projects, the Group Directors, the Examining Corps, and the public. Incumbent provides final and accurate advice to the Deputy Assistant Commissioner for Patent Policy and Projects on the technicalities of the procedures of the Patent Corps since the Deputy Assistant Commissioner for Patent Policy and Projects, as part of the Commissioner's executive staff, may not have detailed knowledge of the technical operation of the Patent Corps, or may not be able to monitor such operations. Incumbent's advice to the Deputy Assistant Commissioner for Patent Policy and Projects, is important since the Deputy Assistant Commissioner for Patent Policy and Projects speaks with finality for the PTO in the petitions area and that the decisions serve as oversight and guidance to the SES Group Directors, the approximately 3,000 patent examiners, and the public.

  • Provides staff assistance to the Director of the Office of Petitions and the Deputy Assistant Commissioner for Patent Policy and Projects. This may include attendance at the Deputy Assistant Commissioner's Staff Meeting. Incumbent will initiate special projects that are frequently identified through the petitions process. For example, when the petitions process identifies areas within the Patent Corps where the operation is not consistent or is improper or should be made to flow more smoothly with other organizations within the PTO, incumbent will study the specific issues involved and make a substantive recommendation regarding viable alternatives and action. This work had direct influence on the development or modification of policies as they apply to the accomplishment of the mission and functions of the PTO.

  • Investigates and prepares reports on issues of concern or interest to the Commissioner, the Assistant Commissioner for Patents or the Deputy Assistant Commissioner for Patent Policy and Projects, ensuring that such matters are timely and thoroughly addressed. The resulting reports will make substantive recommendations regarding viable alternatives and actions. This work has direct influence on the development or modification of policies as they apply to the accomplishment of the mission and functions of the PTO.

  • Represents the Director of Petitions and/or the Deputy Assistant Commissioner for Patent Policy and Projects in contacts with the SES Group Directors, with other PTO offices, with BAR organizations, and with the public.

Factor 1. KNOWLEDGE AND SKILLS REQUIRED

  • Extensive knowledge of the statutes, regulations, procedures and PTO policy concerning the petitions delegated to the Deputy Assistant Commissioner for Patent Policy and Projects for decision.

  • Extensive knowledge of the duties, responsibilities, and priorities of the Commissioner, Assistant Commissioner for Patents and Deputy Assistant Commissioner for Patent Policy and Projects.

  • Extensive knowledge of PTO organizations, policies, procedures, practices and programs.

  • Extensive knowledge and understanding of management principles, practices, methods and techniques, and skill in integrating policies developed by the Deputy Assistant Commissioner for Patent. Policy and Projects with general management of the PTO.

  • Skill in researching, preparing and presenting highly complex technical or legal material and/or highly complex issues.

  • Ability to identify, develop and present fully the many facets of petition issues.

  • Ability to effectively and clearly express complex issues and concepts orally and in writing.

  • Ability to plan, coordinate and supervise projects or studies.

Factor 2. SUPERVISION AND GUIDANCE RECEIVED

Work is performed independently within the broad outline of policy objectives and program needs of the Deputy Assistant Commissioner for Patent Policy and Projects. The incumbent reports directly to the Director of Petitions. Completed work is considered to be technically and legally accurate and is not subject to intensive review by the Director of Petitions or the Deputy Assistant Commissioner for Patent Policy and Projects. Work products are examined from compliance with policy and responsiveness to the needs of the Deputy Assistant Commissioner for Patent Policy and Projects and/or the Assistant Commissioner for Patents. In cases where no guideline exists or where there are conflicting guidelines, incumbent analyzes the situation and makes recommendations which will be given considerable weight by the Deputy Assistant Commissioner for Patent Policy and Projects in deciding appropriate courses of action.

Factor 3. GUIDELINES

The work is performed with the broad policy objectives and program needs of the Director of Petitions and the Deputy Assistant Commissioner for Patent Policy and Projects. The incumbent exercises mature judgment in applying statutes, regulations, office procedure and policies in preparing and/or deciding decisions on petitions.

In cases where no guideline exists or where there are conflicting guidelines, incumbent analyzes the situation and makes recommendations which will be given considerable weight by the Deputy Assistant Commissioner for Patent Policy and Projects in deciding appropriate courses of action.

Factor 4. COMPLEXITIES

Incumbent must plan, prepare, decide and report on the numerous petitions delegated to the Office of the Deputy Assistant Commissioner for Patent Policy and Projects. Petitions adjudicated require analysis of very complex factual and legal issues and a higher order of original and creative legal endeavor in order to obtain a reasonable balance of conflicting interests which may have important economic and technological impact.

The evaluation and preparation of decision on petitions involve significant technological and legal considerations requiring extensive research and analysis of statutes, regulations, judicial decisions and other precedents.

A number of decision on petitions made or recommended by incumbent result in final disposition of substantial property rights.

Incumbent must plan, conduct, manage and report on numerous studies and projects affecting various aspects of Examining Corps and Office policy, programs and activities. Findings and solutions which result from these efforts can be precedent setting and may affect established guidelines and objectives.

Incumbent must determine the approach to be used, the sources of information to be examined, and whether the final product meets the desired objectives of the Deputy Assistant Commissioner for Patent Policy and Projects, the Assistant Commissioner for Patents, and the Commissioner .

Factor 5. SCOPE AND EFFECT

The decisions on petitions, studies and projects managed by the incumbent directly affect the administration and management of the Patent and Trademark Office. The work affects not only the PTO but also the patent attorneys, patent agents, inventors and assignees who prosecute and/or own the patent applications or patents involved in the petitions delegated to the Office of the Deputy Assistant Commissioner for Patent Policy and Projects.

Factor 6. PERSONAL CONTACTS

The incumbent may deal directly with executive and administrative officials in the Office, as well as patent attorneys, patent agents, inventors and representatives of the assignee.

Factor 7. PURPOSE OF CONTACTS

Contacts are to obtain, clarify or present facts or information of interest to the work assigned to the Deputy Assistant Commissioner for Patent Policy and Projects. The work requires tact and diplomacy in planning, coordinating, and supervising studies or projects with persons having vested interests in the findings and recommendations. The work involves active participation in conferences, meetings, hearings or presentations involving problems of significant importance. The work requires tact and diplomacy in interviewing patent attorneys, patent agents and inventors concerning their petitions in which they have vested interests in the incumbent's decision.

Factor 8. PHYSICAL DEMANDS

The work is primarily sedentary with no unusual physical exertion.

Factor 9. WORK ENVIRONMENT

Work is usually performed in an office setting.

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