What is the difference between appealable and petitionable matters in patent prosecution?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. In patent prosecution, there is an important distinction between appealable and petitionable matters. MPEP 1201 states: “The line of demarcation between appealable matters for the Board and petitionable matters for the Director of the U.S. Patent and Trademark Office (Director) should be carefully observed.” Generally, appealable matters relate to the merits of the patent application and are decided by the Patent Trial and Appeal Board. Petitionable matters, on the other hand, are typically procedural issues decided by the Director of the USPTO. For example: Appealable: Rejections based on prior art or patentability issues Petitionable: Requirements for restriction, election of species, finality, non-entry of amendments, and holdings of abandonment Understanding this distinction is crucial for patent applicants and attorneys to pursue the correct course of action when facing issues during patent prosecution. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Jurisdictional Distinction Between PTAB and Director MPEP 1201 Recommended Matters Petitionable to the Director, Not Appealable MPEP 1201 Petitionable Matters Not Appealable to PTAB MPEP 1201 Petitions and Appeals Distinction MPEP 1201 Recommended Objections Determinative of Rejection Are Appealable MPEP 1201 Permitted Patent Merit Disputes Require Judicial Review MPEP 1201 Permitted Appeal Procedure for Merit Disputes MPEP 1201 Ex Parte Appeal Practice Before September 16, 2012 MPEP 1201 Timely Filing of Petitions Required MPEP 1201 Required Free Legal Assistance for Financially Under-resourced PTAB Applicants MPEP 1201 Permitted Other Related FAQs 5 FAQs Collapse How can one appeal the merits of a 37 CFR 1.13...