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Eighteen-Month Publication Questions and Answers

(Updated 7/18/05; added CX4 through CX14 on 2/4/05; updated CM1 on 5/20/04; updated 5/5/03; last reviewed 7/18/02)

 


 

C.   Eighteen-Month Publication 

For helpful hints, please see the following OG notices:

 Helpful Hints Regarding Publication of Patent Applications ,  1249 OG 83 (August 21, 2001) (available at  http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

 Pre-Grant Publication Helpful Hint: File Continuation or Divisional Application with a New Specification and Copy of Oath or Declaration from Prior Application ,  1251 OG 54 (October 9, 2001) (available at  http://www.uspto.gov/web/offices/com/sol/og/2001/week41/pathint.htm ).

CA. Access to Application File
CB. Amended Applications, Publication
CC. Application Data Sheet
CD. Assignment of Application That Has Been Published, see also PAIR
CE. Continuing Applications (including CPAs)
CF. Correction of Bibliographic Data
CG. Correction of Drawings
CH. Corrected or Revised Patent Application Publication
CI. Correspondence Address Printed on Publication
CJ. Display of Application on USPTO Homepage (no current Q & A)
CK. Early Publication
CL. Electronic Filing System
CM. Express Abandonments
CN. Filing Receipts, see also Correction of Bibliographic Data
CO. General Information on Publication on Patent Applications
CP. Information Disclosure Statements and Third Party Prior Art Submissions
CQ. Nonpublication Request
CR. Notice of Publication
CS. Notice of Allowance and Fee(s) Due (Publication Fee Due)
CT. Patent Application Information Retrieval (PAIR)
CU. Patent Application Publication
CV. Patent Rules
CW. Pre-Grant Publication (AIPA) Forms
CX. Priority Claims ; added CX4 through CX14 on 1/5/05
CY. Projected Publication Date, see Filing Receipt
CZ. Provisional Applications
CAA. Provisional Rights
CAB. Questions Regarding the Publication of Patent Applications
CAC. Redacted Publication
CAD. Rejections, 35 USC 135(c)
CAE. Request for Continued Examination
CAF. Rescinding Non-Publication Requests
CAG. Royalty- see Provisional Rights
CAH. Voluntary Publication
CAI. What Applications are Published?
CAJ. When is the Publication Fee Required?
CAK. Where are Published Applications?

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 CA. Access to Application File 

CA1. What is the easiest way to obtain a copy of the file contents of a published application or a paper within the file? (Posted on 6/13/01; renumbered from C12; updated 5/5/03; updated 7/18/05)

The contents of an application published under 35 U.S.C. 122(b) are available electronically over the Internet via the public side of the Patent Application Information Retrieval (PAIR) system, if the application is maintained in the Image File Wrapper (IFW) system.

A copy of the file contents or a particular paper within the file of an application published under 35 U.S.C. 122(b) may also be requested electronically over the Internet at  http://ebiz1.uspto.gov/oems25p/index.html or directly by contacting the Office of Public Records via telephone at the customer service numbers below, via facsimile at (703) 308-9759, or via mail addressed to the United States Patent and Trademark Office, Office of Public Records, P.O. Box 1450 Alexandria, VA 22313-1450. The fee for a copy of a file ($200.00 for the first 400 or fewer pages) is set forth in 37 CFR 1.19(b)(1), the fee for a particular paper ($25.00) is set forth in 37 CFR 1.19(b)(1)(i)(D). No physical access to any paper of a pending published application is permitted. Questions regarding this service should be directed to the Office of Public Records Customer Service Line at (703) 308-9726 or (800) 972-6382. Customer Service staff are available between 8:30 a.m. and 8:00 p.m. US Eastern Standard Time. The After Hours Technical Support Line is: (800) 786-9199. Help using the online ordering system is also available online at  http://ebiz1.uspto.gov/vision-service/ShoppingCart_P/ShowHelp .

 CB. Amended Applications, Publication 

CB1. When submitting an application though EFS for purposes of having the amended version published, how should the claims be numbered if some of the initial claims have been canceled and new claims have been added? (Posted on 10/4/01)

The EFS version of the amended application should be filed with claims that are pending in the application (i.e., excluding deleted claims and including new claims). PASAT will automatically renumber the claims in consecutive ascending order.

For more information on preliminary amendments, see Helpful Hints Regarding Publication of Patent Applications, 1249 OG 83 (August 21, 2001) (available on the Internet at  http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

 CC. Application Data Sheet 

CC1. If the domestic priority/continuity information has been included in an Application Data Sheet (ADS) in compliance with 37 CFR 1.76, will such information be printed on the front of the application publication (and the patent) as well as within the text of the specification? (Posted on 10/4/01)

If the domestic priority/continuity information is included in an application data sheet, such information is not required to be included in the first sentence of the specification following the title. The domestic priority/continuity information will be printed on the front page, but not in the specification of the application publication and the patent, unless such information was also provided by the applicant in the first sentence of the specification following the title.

 CD. Assignment of Application That has Been Published, see also PAIR 

CD1. How do I find out whether a patent application publication has been assigned? (Posted on 6/27/01; renumbered from C23; updated on 2/27/02 and 8/01/02)

If applicant requested the assignment information to be printed on the patent application publication, then the Office prints the assignee on the patent application publication. If no assignment information is included, then no assignee field will appear. There is no legal effect to this information when it is included or not included on a patent application publication (or patent). It is included for informational purposes only. Assignments are recorded in a special database upon payment of the statutory fee, and meeting other regulatory requirements. Assignment information is publicly available for patent application publications pursuant to 37 CFR 1.12(a)(1) from the Patent Assignment Search Room, which can be reached by telephone at (703) 308-2768.

CD2. Will assignee data be printed on a patent application publication? (Posted on 10/4/01)

If the applicant would like the assignee data to be published, the information must be provided on the application transmittal letter or the application data sheet (ADS) that was filed with the application. The applicant may also submit the information via PAIR (Bib-data review prior to publication). If the assignee data is recorded with the Assignment branch only, the information will not be published.

 CE. Continuing Applications (including CPAs) 

CE1. If I file a Continued Prosecution Application (CPA), will the application be subject to publication? (Posted on 10/4/01; updated on 2/27/02)

If the CPA is filed on or after 11/29/00 in an application that is eligible for the CPA practice, the Office will publish the content of the original filed prior application promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under title 35, United States Code. For example, if the prior application has no benefit claim, the application will be published after 18 months from the filing date of the prior application.

If the CPA is filed before 11/29/00 or filed in an application that is not eligible for the CPA practice, the application will not be published.

See questions A18, A19, and A20 for restrictions on the CPA practice, treatment of improper CPA, and the differences between a request for continued examination (RCE) and a CPA.

 CF. Correction of Bibliographic Data 

CF1. How can I ensure that the bibliographic information for a patent application is printed correctly? (Posted on 6/27/01; updated 10/01; renumbered from C13)

Use of an Application Data Sheet (ADS) (see  http://www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html and 37 CFR 1.76) assists the Office in identifying the appropriate bibliographic information for a patent application for entry into the Office's computer systems. Since the information reflected on a filing receipt (e.g., title) is used for publishing the patent application, use of an ADS can help to ensure that the patent application is printed correctly. In addition, if the bibliographic information for a patent application (e.g., inventor names and residences, title, assignee, and other information shown on the filing receipt) is incorrect, applicants may submit corrections to the bibliographic information through the Patent Application Information Retrieval (PAIR) system (see the answers to the questions CT1 - CT7 (originally C14 - C19) or request a corrected filing receipt. If the information is submitted more than fourteen weeks before the projected publication date, there should be sufficient time for the information to be corrected before the information is forwarded to the printer (about nine weeks before the projected publication date).

For more information on PAIR, see Helpful Hints Regarding Publication of Patent Applications , 1249 OG 83 (August 21, 2001) (available on the Internet at  http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

 CG. Correction of Drawings 

CG1. Are the time periods to submit corrected drawings in response to the Notice to File Missing Parts and the Notice to File Corrected Application Papers extendable? (Renumbered from C11)

Yes. The time period to file corrected drawings is extendable up to 5 months under 37 CFR 1.136(a) and in an exceptional situation, further extendable under 37 CFR 1.136(b). These Notices have been corrected to make it clear that the time period is extendable.

 CH. Corrected or Revised Patent Application Publication 

CH1. How do I request a republication of an application to correct or revise a patent application publication? (Posted on 10/4/01)

Any request for the republication of an application previously published must be filed using the Electronic Filing System (EFS). If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed.

To correct or revise applicant or non-material errors, the applicant must pay publication and processing fees as set forth in 37 CFR § 1.18(d) (currently $300) and 1.17(i) (currently $130), respectively. If there is no payment of fees, the USPTO will send the applicant a letter requiring the fees. The republication of the application will be delayed.

There are no fees due for material errors, which are apparent from the USPTO records. These requests for corrected or revised publications must be filed within 2 months from the publication date of the patent application publication. This period is not extendable.

For more information on EFS, go to  http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

CH2. What is the deadline for requesting a republication of an application to correct or revise a patent application publication? (Posted on 10/4/01)

The time period for requesting a republication to correct a material error made by the USPTO without a fee is 2 months from the publication date. If the applicant is willing to provide an EFS copy and pay the $430 republication fee, there is no time limit.

CH3. Will the entire application including the corrections or only the corrections be printed in a corrected or revised publication? (Posted on 10/4/01)

The entire application including the corrections will be published.

 CI. Correspondence Address Printed on Publication 

CI1. Patent application publications always appear to have a correspondence address printed on them that is the same as the correspondence address for the application. Can no address or a different address be printed? (Posted on 6/27/01; renumbered from C27)

No.

 CJ. Display of Application on USPTO Homepage 

CJ1. Has been deleted as being obsolete (Posted on 6/27/01; renumbered from C36; deleted 8/01/02)

 CK. Early Publication 

CK1. Is there a form for an early publication request? (Posted on 6/27/01; renumbered from C28)

No, in an application filed on or after 11/29/00, applicant may request early publication of an application with any conspicuous letter requesting early publication. The request must include the publication fee. See 37 CFR 1.18(d). Note that if early publication is requested, and the publication fee paid, applicant will not be required to pay the publication fee at allowance.

CK2. How do I request an early publication after I have submitted my application? (Posted on 10/4/01; updated on 2/27/02)

Any request for an early publication must be accompanied by the publication fee set forth in 37 CFR 1.18(d) (currently $300). The applicant must submit a copy of the application in compliance with the Electronic Filing System (EFS) requirements in 37 CFR 1.215(c) or the USPTO will publish the application as provided in 37 CFR 1.215(a). If the EFS requirements are not met, the application will be published, in general, as originally filed. No consideration will be given to requests for publication on a certain date. Such requests will be treated as a request for publication as soon as possible.

CK3. If I request for an early publication, how soon will the application be published? (Posted on 10/4/01)

The publication cycle takes approximately 14 - 16 weeks and does not begin until the application is complete and ready for publication (e.g., an executed declaration has been filed and the filing fee has been paid).

 CL. Electronic Filing System 

CL1. What is the Electronic Filing System? (Posted on 10/4/01)

EFS is the electronic system for submitting patent applications, computer readable format (CRF) biosequence listings, and pre-grant publication submissions to the USPTO via the Internet. It includes:

  • authoring tools to help the applicant prepare a patent specification in XML format;
  • a software package called ePAVE (electronic packaging and validation engine) to assemble the various parts of the application and transmit the application to USPTO over the Internet; and
  • a digital certificate to secure the transmission of the application to the USPTO.

For more information on EFS, go to  http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

CL2. What type of submissions can be filed with EFS? (Posted on 10/4/01; updated on 8/01/02)

EFS can be used to submit:

  • New utility patent applications,
  • Biosequence listings for applications previously filed in paper, and
  • Pre-grant publication submissions for previously filed applications, where the applicant wants to publish:
    1. an amended or redacted version of the application rather than the application as originally filed,
    2. a republication to correct or revise a publication, or
    3. the application voluntarily because the application filed before 11/29/00 is not subject to publication.
  • Information Disclosure Statements (IDSs); and
  • Provisional applications.

At this time EFS does not accept:

  • Design applications,
  • New plant applications,
  • Reissue applications,
  • International Patent Cooperation Treaty (PCT) applications, or
  • Reexamination requests.

For more information on EFS, go to  http://www.uspto.gov/ebc/efs/index.html or call the Electronic Business Center at 703-308-6845 or 703-305-3028.

CL3. Where does an applicant send the "paper-copy" of an EFS redacted publication request? (Posted on 10/4/01; updated 5/5/03)

Mail Stop PGPUB, Commissioner for Patents, P.O. Box 1450 Alexandria, VA 22313-1450.

CL4. If an applicant wants to publish an amended version of the application when he or she files a CPA, when must the applicant file the EFS version of the amended application for the publication? (Posted on 10/4/01)

The applicant will have one month from the mailing date of the new filing receipt to file the amended application via EFS. See Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes,  1241 OG 97 (December 26, 2000).

 CM. Express Abandonment 

CM1. How do I file an express abandonment to avoid publication? (Posted on 10/4/01; updated 5/5/03; updated 5/20/04)

A petition to abandon an application to avoid publication under 37 CFR 1.138(c) and the fee (currently $130) set forth in 37 CFR 1.17(h) may be filed if there is sufficient time (i.e., more than 4 weeks) to permit the appropriate officials to recognize the abandonment and remove the application from the publication process, i.e., the petition must be received by the Office of Patent Publication no later than four weeks before the projected publication date. The petition will not be granted unless the petition and the fee are received more than four weeks prior to the projected date of publication (found on the filing receipt). The petition and the fee (or an authorization to charge the fee to a deposit account) should be mailed to Mail Stop Express Abandonment Commissioner for Patents, P.O. Box 1450 Alexandria, VA 22313-1450, or faxed to the Office of Patent Publication, PGPub Division, at (703) 305-8568.

CN. Filing Receipts, see also Correction of Bibliographic Data 

CN1. I received a filing receipt in a Continued Prosecution Application (CPA), but the filing receipt has nothing specific to the CPA, except an indication of a projected publication date. Why doesn't the filing receipt indicate that it is for a CPA rather than the originally-filed application? (Posted on 6/27/01; renumbered from C20)

The Office began to mail filing receipts for CPAs beginning in February of 2001. The filing receipts that were first mailed did not explain that they were for the CPA and created considerable confusion. The Office has revised the receipt so that for CPAs, the filing receipt now states "Receipt is acknowledged for a CPA in this nonprovisional Patent Application" and also has a field for the date the CPA was filed between the field for the date the foreign filing license was granted and the Projected Publication Date. Because the application is identified by the application number and filing date accorded when the application was originally filed, the application number and filing date in the header will continue to indicate a filing date earlier than the filing date of the CPA.

CN2. The filing receipts that I receive look different, sometimes they have assignee information and sometimes they do not. Should they look the same? (Posted on 6/27/01; renumbered from C21)

If applicants have provided assignment information on the transmittal letter or on an application data sheet, or submitted it through PAIR, a field labeled "Assignment for Published Patent Application" will appear after the list of the inventors. If no assignment information has been provided for purposes of printing the patent application publication, this field will not appear.

CN3 has been deleted because the problem stated in the Q&A has been corrected. (Updated on 2/27/02)

CN4. I received a filing receipt with a projected publication date, and I don't think that the application should be published, what should I do? (Posted on 6/27/01; renumbered from C31)

If you do not think that you should have received a projected publication date because you filed a request for continued examination (RCE) or because the filing date of the application is before November 29, 2000, contact the Technology Center where your application is assigned and ask for the Customer Service Representative. The Representative can have the problem corrected.

 CO. General Information on Publication of Patent Applications 

CO1. Is there any information on the United States Patent and Trademark Office Web site regarding automation plans related to Pre-Grant Publication of Applications? (Renumbered from C1)

Yes, please see the Pre-Grant Publication Global Concept of Operations document, posted on the AIPA web page, under the heading "Presentations."

For more information on publication of patent applications, see Helpful Hints Regarding Publication of Patent Applications ,  1249 OG 83 (August 21, 2001) (available on the Internet at  http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

 CP. Information Disclosure Statements and Third Party Prior Art Submissions 

CP1. Will references in a submission under 37 CFR § 1.99 be placed in the application file and forwarded to the examiner if the submission includes explanation or references that are highlighted? (Posted 9/6/00; Renumbered from C7)

Section 1.99 provides that a submission by a member of the public of patents or publications relevant to a pending published application will be entered in the application file if the submission complies with the requirements of § 1.99 and the application is still pending when the submission and application file are brought before the examiner. Section 1.99(d) provides that a submission under § 1.99 may not include any explanation of the references, or any other information. The Office will dispose of any explanation or information if included in a submission under § 1.99. To ensure that there is no protest, the Office will review submissions under § 1.99 to determine whether they are limited to patents and publications before the submission is placed in the file of the application and forwarded to the examiner. The submission under § 1.99 will not be placed in the file of the application, if the explanation of the references and any other information included in the submission are integrated in the references and cannot be extracted easily, or if the references are highlighted.

CP2. If a 1.99 third party submission contains a patent or printed publication that is material to the patentability of a claim, should the applicant disclose such reference to the Office in an IDS in compliance with 37 CFR 1.97 and 1.98? (Posted on 10/4/01)

Yes, since the entry of a third party submission does not mean that the information contained in the submission be considered by the examiner, an individual who has a duty to disclose under 37 CFR 1.56, including the applicant, should submit such information in an IDS in compliance with 37 CFR 1.97 and 1.98 to ensure that any material information is properly considered by the examiner.

 CQ. Nonpublication Request 

CQ1. Where can I find the form for the certification under Subtitle E of the American Inventors Protection Act of 1999 that no foreign filing is planned for the invention described in a new application? (Posted 10/4/01; Renumbered from CA1)

The new form PTO/SB/35 "Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i)" is available at:  http://www.uspto.gov/web/forms/sb0035.pdf [PDF]

For more information on nonpublication request, see Helpful Hints Regarding Publication of Patent Applications,  1249 OG 83 (August 21, 2001) (available on the Internet at  http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

CQ2. (A) Is there a mechanism by which the USPTO intends to assess whether or not any foreign filings have been made contrary to the certification provided by the applicant under 35 USC 22(b)(2)(B)(i), and whether or not the notice requirements of section 122(b)(2)(iii) have subsequently been met? (Updated 7/9/01; renumbered from CA2; updated 5/5/03)

The Office does not have any current plans to routinely monitor compliance with either the certification or notice requirements of 35 USC 122(b)(2). Applicants are advised that the Office's failure to note that an application has gone abandoned as a matter of law for failing to provide the proper notice has no effect on the abandoned status of the application (will not operate to prevent the abandonment of the application), regardless of any indication of allowability from the Office.

(B) Also, is there a mechanism by which the USPTO intends to provide notice to applicants that their patent applications have been "regarded as abandoned" for having failed to provide notice of foreign filings within 45 days thereof, as required by section 122(b)(2)(iii)?

The Office does not have any current plans to routinely provide notice to applicant that their patent applications have been "regarded as abandoned." Should the examiner become aware of the foreign filing, e.g., during the prior art search, the examiner does have the authority to formally hold the application abandoned.

CQ3. If I file a PCT application designating the U.S. and then before the International Bureau publishes the PCT application I abandon the application, may I submit a non-publication request under 37 CFR 1.213 with a filing of a U.S. application under 35 USC 111, that discloses the same subject matter as disclosed in the PCT application? (Renumbered from CA3)

No, the mere filing of the PCT application precludes the proper use of a non-publication request, since the invention disclosed in the US application was the subject of an application that was filed under an international agreement requiring publication at 18 months (the PCT). 35 USC 122(b)(2)(B)(i) states that "If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, . . ." The trigger in the statute is not the publication, but rather the trigger is the act of filing in a foreign country that requires publication, or under international agreement that requires publication. Thus 37 CFR 1.213(a)(3) is consistent with the statutory requirement. The statute simply does not allow for abandonment of the foreign application, or application under a multilateral international agreement, prior to foreign publication at 18-months in order to provide for an appropriate request for non-publication in the US application.

CQ4. I did not use the USPTO form, "Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i)" (posted at  http://www.uspto.gov/web/forms/sb0035.pdf [PDF] ), when I filed a patent application. Instead I put the request for non-publication in the body of the declaration for the patent application under 37 CFR 1.63. My application was assigned a publication date. How can I get the non-publication request treated and not have my application published? (Renumbered from CA4; Updated 10/01)

A request for non-publication will not be recognized unless it is conspicuous. See 37 CFR 1.213(a)(2). Providing text as one paragraph among numerous other paragraphs with no highlighting of the request for non-publication is not conspicuous, and thus the Office's assignment of a publication date was appropriate. To avoid publication you may expressly abandon the application, and file a new application under 37 CFR 1.53(b), claiming priority to the earlier-filed application, with a "Nonpublication Request under 35 U.S.C. 122(b)(2)(B)(i)" (posted at  http://www.uspto.gov/web/forms/sb0035.pdf [PDF] ) or make the request and certification in a similarly conspicuous manner when filing the patent application. If your application has been assigned a publication date within the next one to six months, you should consider filing a petition for express abandonment under 37 CFR 1.138(c). If your application has been assigned a publication date within the next four weeks, then it is too late to avoid publication of the application. See Changes to Implement Eighteen-Month Publication of Patent Applications, Final Rule, 65 Fed. Reg. 57024, 57034, Sep. 20, 2000,   1239 Off. Gaz. Pat. Office 63, 73 (October 10, 2000) . Applicant would have a similar remedy in other situations where the request is not conspicuous, for example, where the request is in the specification of the application, on a fee transmittal sheet, or buried in the transmittal letter.

CQ5. I filed a nonpublication request with the application on filing, but the filing receipt shows a projected publication date. What should I do? (Posted on 6/27/01; renumbered from C34; updated 7/18/05)

Applicant should first check the Office's electronic application file (IFW) via private PAIR to see if the nonpublication request (which must be conspicuous and include a proper certification) is present. If the conspicuous nonpublication request is actually present somewhere in the Office's file but it was improperly not recognized, applicant should contact the Office of Pre-Grant Publication at (703) 605-4283. If the Office's file does not contain the nonpublication request and applicant has evidence (e.g., an itemized post card receipt showing the request and the "Office Date" stamp) that a proper nonpublication request was filed with the Office, applicant should contact the Office of Pre-Grant Publication and file a request for corrected filing receipt accompanied by the evidence and a copy of the nonpublication request.

Once the Office verifies that the nonpublication request was properly filed and it was improperly processed, the Office will withdraw the application from the publication process if there is sufficient time to remove it (e.g., at least 4 weeks prior to the projected publication date shown on the filing receipt). Thus, it is important for applicant to promptly check the filing receipt and notify the Office of Pre-Grant Publication of any improperly processed nonpublication request.

CQ6. I filed a nonpublication request and a certification under 35 U.S.C. 122(b)(2)(B)(i) using the USPTO form PTO/SB/35 at the time of filing the U.S. application. At that time, I did not believe that publication was necessary because the invention disclosed in the application was already published in a previously filed corresponding PCT application. Upon further review, however, I now believe that publication of the U.S. application is appropriate because the PCT application is an application under a multilateral international agreement that requires eighteen-month publication. (Posted on 10/4/01; updated 5/1/03)

  1. Do I need to rescind the nonpublication request?
  2. Is the U.S. application abandoned because the certification is improper?
  3. Do I need to file a petition to revive the abandon application due to failure to notify the Office of the PCT application under 37 CFR 1.137(f)?
  4. Is there anything I can do to correct the improper certification so that the validity or enforceability of any patent issuing from the U.S. application is not jeopardized?
  1. Yes. The request to rescind (USPTO form PTO/SB/36) should be filed promptly. Since the PCT application was filed prior to the filing of the U.S. application, the applicant or the representative should not have certified that the invention disclosed in the U.S. application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication. See 35 U.S.C. 122(b)(2)(B)(i). The U.S. application is subject to publication under the eighteen-month publication provisions of AIPA.
  2. The Office will not treat the U.S. application as abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii). The statute only provides for that an application is regarded as abandoned when the applicant fails to notify the Office within 45 days of a subsequently filed application that is directed to the same subject as the invention of the US application in another country, or under a multilateral international agreement, that requires eighteen-month publication. 35 U.S.C. 122(b)(2)(B)(iii) does not apply to the situation when the applicant made an improper certification subsequent to the foreign filing
  3. A petition to revive under 37 CFR 1.137(f) is inappropriate because the application is pending (unless the application is abandoned for other reasons). If a petition to revive under 37 CFR 1.137(f) is filed, the Office will dismiss the petition as inappropriate but retain the petition fee because the Office was required to evaluate the merits of the petition before being able to determine that the petition was not appropriate.
  4. Applicants and their representatives should make sure that the certification is proper before signing and filing it with the Office. While applicants should rescind any improper certification as soon as possible, 35 U.S.C. 122(b)(2)(B)(i)-(iv) does not include any provision for "correction" of an improper certification. Any applicants or their representative, however, who makes a false statement (e.g., an improper certification) may be violating 37 CFR 10.18(b). In addition, such false statements by registered patent practitioners may also violate other Disciplinary Rules, 37 CFR 10.20-10.112. While applicant cannot undo the fact that an improper certification was made in this application, with the filing of the rescission request applicant may explain that the original certification was improper.

 CR. Notice of Publication 

CR1. How will I know when my patent application has been published? (Posted on 6/27/01; updated on 10/17/01; renumbered from C25)

Applicant will be mailed a notice with the publication number and publication date. This notice is now being mailed on the publication date.

CR2. Will the Office mail a notice if the publication date is changed? (Posted on 6/27/01; renumbered from C26)

Yes, a "Notice of New or Revised Publication Date" is mailed if the publication date changes by more than six weeks due to processing delays, a secrecy order being removed, or subsequent to the revival of an abandoned application. If the publication date is changed, or the application is not to be published because the application is abandoned and the abandonment is recognized more than nine weeks before the projected publication date, then the Notice of Abandonment will serve as the communication that the application will not be published. If applicant adds or deletes a priority claim so that the 18-month publication date is changed, applicant will be mailed a corrected filing receipt, informing applicant of the newly assigned publication date.

 CS. Notice of Allowance and Fee(s) Due (Publication Fee Due )

CS1. I received a "Notice of Allowance and Fee(s) Due" requiring a publication fee. I have the following questions regarding the publication fee. (Posted on 6/01/01; renumbered from CB1; updated on 2/27/02, 8/01/02 and 5/5/03)

(a) The projected publication date of my application is not for another nine months. Surely the patent will issue before that date. Do I still need to pay the publication fee?

Yes. You must pay the publication fee within the time period set forth in the Notice, and may request a refund if the application is not published.

(b) If I pay the publication fee, but the patent issued and the application has not published, where should I mail the refund request?

The refund request should be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

Mail Stop PGPUB
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.

(c) I filed a continuation on or after November 29, 2000. The prior application has issued as a patent. Why do I need to pay a publication fee for publication of this application when the parent (which has the same disclosure) has issued as a patent?

The statute requires all applications to be published, not just applications that do not claim the benefit of any other application and authorizes the USPTO to recover the publication fee when the continuation application is allowed. You must pay the publication fee when the continuation application is allowed because the continuation application has been or will be published, and because a non-publication request was not made on filing in an application that is subject to publication under 35 U.S.C. 122(b).

CS2. I received a Notice of Allowance and Fee(s) Due requiring payment of the publication fee. I, however, forgot to pay the publication fee within the 3-month period for reply set forth in the notice. What do I need to submit to make sure that the application will issue as a patent? (Posted on 3/04/02; updated on 8/01/02).

In this situation, you will need to file a petition to revive an abandoned application for failure to timely pay the publication fee under 37 CFR 1.137(b). See MPEP 711.03(c), pages 700-140 and 700-141 (August 2001). You may use the form  PTO/SB/64 [PDF] available on the USPTO web site at  http://www.uspto.gov/web/forms/sb0064.pdf [PDF] . The petition must accompanied by: (1) the petition fee as set forth in 37 CFR 1.17(m); (2) the publication fee; a complete reply to the notice (i.e., the issue fee, corrected drawing, etc.); and (3) a statement that the entire delay in filing the reply and/or fee(s) from the due date until the filing of a grantable petition was unintentional. In addition, if a complete reply to the Notice of Allowance was not filed (e.g., if the issue fee was also not paid, and any drawings, declaration, or biological deposit was not filed), then a complete reply to the Notice of Allowance must also be filed. The petition and an authorization to charge the fees to a deposit account or credit card may be faxed to the Office of Petitions (703) 308-6916.

 CT. Patent Application Information Retrieval (PAIR) 

CT1. How can I use private PAIR to correct bibliographic data? (Posted on 6/27/01; renumbered from C14)

In the private side of PAIR (http://pair-direct.uspto.gov), the applicant should choose the Publication Review button, and then the Request Data Change button on the screen. The instructions will then be brought up, with a data entry box in which the changes can be inserted. For instance, the following text should be typed in the box: "An inventor has been omitted. John Doe should be added with a residence of Arlington, VA." Once the entry has been checked for accuracy, the Transmit Request button should be selected, and the information will be electronically sent to the USPTO. A copy of the request will not be placed in the patent application file, and applicant should only submit a request through PAIR to correct information where the computer records show information that is different from the application file. Requests filed through PAIR will come into the Electronic Business Center (EBC) Customer Support Center, where the data will be changed in the USPTO's computer database, and, once the data is corrected, the changes can be displayed in PAIR, and the EBC will mail the applicant a corrected filing receipt. The Customer Support Center of the Electronic Business Center can be reached by telephone at (703)305-3028. A request for a corrected filing receipt should not be submitted if the request is submitted through PAIR, since the PAIR request will result in the same correction being made.

For more information on PAIR, see Helpful Hints Regarding Publication of Patent Applications,  1249 OG 83 (August 21, 2001) (available on the Internet at  http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

CT2. I can't find a bibliographic review button in private PAIR. I only see a contents button. Where is it? (Posted on 6/27/01; renumbered from C15)

The bibliographic review button is only available for applications assigned a projected publication date.

CT3. What do I need to type in Public PAIR to retrieve an application? The number that I type to view the application (using  http://www.uspto.gov/patft ) does not work. (Posted on 6/27/01; renumbered from C16)

The four-digit year, a dash, a seven digit number reflecting the part of the publication number not including the year, a dash and a two digit kind code. For example, type "2001-0000241-A1." "US-2001-0000241-A1" also works.

CT4. has been deleted as being obsolete. (Posted on 6/27/01; updated 7/9/01; renumbered from C17; deleted 8/01/02)

CT5. What information cannot be corrected through PAIR? (Posted on 6/27/01; renumbered from C18)

PAIR should only be used to conform the Office's electronic records with the patent application file. For example, if the originally-submitted oath or declaration was signed by three inventors, but the filing receipt lists two, a request can be made through PAIR to add the inventor. If the originally filed executed declaration named an inventor who should not have been named as an inventor, or did not include someone who should have been included as an inventor, then applicant must file the appropriate papers under 37 CFR 1.48. Similarly, to change the order of the inventors from that shown on the oath or declaration, a petition under 37 CFR 1.182 is required and PAIR is not the appropriate mechanism.

CT6. Can I add the assignment information to be printed on the patent application publication through PAIR's bibliographic data change request screens? (Posted on 6/27/01; renumbered from C19)

Yes. Although applicants may request publication of the name of the assignee of an application (if the assignment has already been recorded or is being submitted for recordation) on the patent application publication by the use of the PAIR system, this does not replace recordation of the assignment documents. The assignment documents should continue to be forwarded with the cover sheet and fee to the Assignment Division. A corrected filing receipt will be mailed to applicant once the request for entry of the assignment has been processed by the Electronic Business Center.

CT7. Who should I contact to have a contents entry error in PAIR corrected? (Posted on 6/27/01; renumbered from C32)

If the error is a contents entry other than the filing date of an application, including a Continued Prosecution Application (CPA), contact the Customer Service Representative (Representative) for the Technology Center (TC) where your application is assigned. If you are alleging that the date shown in PAIR is an incorrect date, then the Representative may need documentary evidence (e.g., an Express Mail label or a post card receipt) showing that the paper was received on a certain date. Note that the certificate of mailing date (which may be relied upon for timely filing purposes) is not retained in the USPTO PALM records, and that the date a paper is considered received in the Office is the date that the USPTO actually received the papers, unless the paper was filed using Express Mail under 37 CFR 1.10. The Representative will obtain the application file wrapper and determine whether there is an error in the USPTO's records. If there is a date error, the records will be corrected. If the error is in the filing date of an application, including a CPA, a filing date petition is required. Contact the Office of Petitions by telephone at (703)305-9285 or by fax at (703)308-6916 for further information.

 CU. Patent Application Publication 

CU1 has been deleted because the information is provided in CR1 Q&A. (Updated on 2/27/02)

CU2. How do I access my patent application publication on the Internet? (Posted on 10/4/01)

The publication will be available on the USPTO home page in the Searchable Patent Databases section  http://www.uspto.gov/patft and information about the application will also be available on PAIR (Public and Private).

 CV. Patent Rules 

CV1. Where do I find patent rules applicable to Pre-Grant Publication on the Internet? (Posted on 10/4/01)

Go to  http://www.uspto.gov/web/offices/dcom/olia/aipa/ . Click on Rules, Patent. Alternatively, go to  http://www.uspto.gov/web/offices/dcom/olia/aipa/pgpfr.pdf [PDF] for Changes To Implement Eighteen-Month Publication of Patent Applications; Final Rule, 65 FR 57024 (September 20, 2000).

 CW. Pre-Grant Publication (AIPA) Forms 

CW1. What AIPA Forms are available on the USPTO web site? (Posted on 10/4/01)

Go to  http://www.uspto.gov/web/offices/dcom/olia/aipa/forms.htm for the following forms.

  • Complaint Form Regarding Invention Promoter (PTO/2048)
  • Credit Card Payment Form (PTO/2038)
  • Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i) (PTO/SB/35)
  • Request for Continued Examination (RCE) Transmittal(PTO/SB/30)
  • Request for Deferral of Examination Under 37 CFR § 1.103(d) (PTO/SB/37)
  • Request to Rescind Previous Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(ii)(PTO/SB/36)

Go to  http://www.uspto.gov/web/forms/index.xml for these and other USPTO forms. Go to  http://www.uspto.gov/web/forms/qas.html for frequently asked questions about USPTO forms.

 CX. Priority claims 

CX1. When the National Stage of an International Application is entered as to the United States, should the first line of the specification be amended to recite the relationship of the National Stage to the International Application and/or should the language of publication of the International Application by the International Bureau be set forth? (Renumbered from C8)

Neither the relationship of a National Stage application to the International Application, nor the language of publication by the International Bureau should be set forth in the first line of the specification of the National Stage application. An International Application is not a prior application as to the National Stage (they are legally the same application), therefore amended 37 CFR 1.78(a)(2) does not apply.

CX2. If a 35 U.S.C. § 111(a) continuation of the same International Application is filed, should the first line of the specification of the continuation application be amended to contain the relationship to the International Application? (Renumbered from C9; updated on 12/11/02)

When a § 111(a) continuation of an International Application is filed on or after November 29, 2000, the first line of the specification must be amended, or an
application date sheet must be submitted, within the time period set in amended 37 CFR 1.78(a)(2) to contain a reference to the relationship of the §
111(a) continuation to the prior international application. For example, the language --This application is a continuation of YY/123,456, which was a national stage filing under 35 U.S.C. 371 of PCT/XX99/01234 filed June 1, 1999.--

CX3. I filed a continued prosecution application (CPA) in a 1.53(b) application that did not include a continuity claim to an earlier nonprovisional application. I now want to add the continuity claim to the earlier nonprovisional application under 35 U.S.C. 120 in the CPA. The 1.53(b) application was filed before 5/29/00, and the CPA was filed on or after 11/29/00. The time period set forth in 37 CFR 1.78(a) (2) (i.e., the later of 4 months from the actual filing date of the CPA or 16 months from the filing date of the earlier nonprovisional application) for filing a benefit claim to the earlier nonprovisional application applies to the CPA. Such time period, however, has expired for adding the reference of the earlier nonprovisional application in the first sentence of the specification or in an application data sheet, even if the time period is measured from the filing date of the CPA. What do I need to submit for claiming the benefit of the earlier nonprovisional application? (Posted on 3/4/02)

A. You will need to file: (1) a petition under 37 CFR 1.182 requesting entry of an amendment into an abandoned application; (2) the petition fee set forth in 37 CFR 1.17(h); and (3) an amendment to add the reference of the earlier application to the first sentence of the specification. 35 U.S.C. 120 permits the entry of a subsequent amendment in an abandoned application to include the benefit of an earlier filing date for purposes other than prosecution. See Sampson v. Commissioner , 195 USPQ 136 (D.D.C. 1976). Please note that a petition to accept an unintentionally delayed claim under 37 CFR 1.78(a)(3) and the surcharge under 37 CFR 1.17(t) are not required in the CPA since the rule specifically provides for an exception for continued prosecution applications.

  CX4. Applicant failed to claim the benefit of a prior-filed application under 35 U.S.C. 120, 121, or 365(c) in a later-filed original application, which issued as a patent. Applicant subsequently filed a reissue application to correct the patent by adding a claim for the benefit of the prior-filed application. Would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required? (added 4Feb2005)

A petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) would not be required if the application for the original patent was one of the categories of applications set forth in 37 CFR 1.78(a)(2)(ii)(A)-(C) (i.e., an application for a design patent; an application filed under 35 U.S.C. 111(a) before November 29, 2000; or a nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000).

Example 1: A petition and the surcharge set forth in 37 CFR 1.17(t) would not be required if the original application was a utility application filed under 35 U.S.C. 111(a) before November 29, 2000, even if the reissue application was filed on or after November 29, 2000 and the benefit claim was not made within four months of the filing date of the reissue application.

Example 2: A petition and the surcharge set forth in 37 CFR 1.17(t), however, would be required if the original application was a utility application filed under 35 U.S.C. 111(a) on or after November 29, 2000 without a benefit claim being made in the original application, even if the benefit claim was filed upon the filing of the reissue application.

If a benefit claim is accepted and the petition under 37 CFR 1.78(a)(3) is granted in the reissue application, a further petition under 37 CFR 1.78(a)(3) and the surcharge for adding the benefit claim to the patent would not be required in any subsequent application for reissue of the patent. In order to provide a complete record, applicant must file an amendment to add the benefit claim and a copy of the petition and the decision granting the petition, in the subsequent reissue application.


CX5. If applicant fails to file an amendment to add a claim for the benefit of a prior-filed reissue application in a later-filed reissue application within the time period set forth in 37 CFR 1.78(a)(2) (e.g., four months from the actual filing date of the later-filed reissue application or sixteen months from the filing date of the prior-filed reissue application, whichever is later), would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required? (added 4Feb2005)

Yes, a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) would be required if the later-filed reissue application is a utility or plant application filed on or after November 29, 2000, even if the later-filed reissue application is for correcting a patent that issued from an application filed before November 29, 2000. This is because the benefit claim is between the later-filed reissue application and the prior-filed reissue application and the benefit claim of the prior-filed reissue application is not being added to correct a benefit claim in the patent.

CX6. Applicant filed an application with a benefit claim to an earlier copending nonprovisional application. The benefit claim was filed within four months from the actual filing date of the application, but the relationship of the applications was designated as “continuation.” If applicant wants to change the relationship to “continuation-in-part,” would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required? (added 4Feb2005)

No, the petition under 37 CFR 1.78(a)(3) and the surcharge would not be required when applicant is changing the relationship in a benefit claim from “continuation” (or “divisional”) to “continuation-in-part” or from “continuation-in-part” to “continuation” (or “divisional”), or from “continuation” to “divisional,” because the Office was able to schedule the application for publication with the relationship given.

CX7. Applicant filed a benefit claim to an earlier provisional application within four months from the actual filing date of a utility non-provisional application filed on or after November 29, 2000. Applicant, however, submitted a benefit claim that included a relationship of the applications in the first sentence of the specification (e.g., “This is a continuation of the provisional application, 60/xxx,xxx, filed on 12/01/01”). Since a benefit claim that includes a relationship is considered a claim under 35 U.S.C. 120, 121, or 365(c), can applicant correct the benefit claim under 35 U.S.C. 120, 121, or 365(c) to a benefit claim under 35 U.S.C. 119(e) after the time period set forth in 37 CFR 1.78(a)(5) without filing a petition under 37 CFR 1.78(a)(6) and the surcharge set forth in 37 CFR 1.17(t)? (added 4Feb2005)

Applicant can correct the benefit claim during the pendency of the application by submitting an amendment changing the first sentence of the specification (e.g., “This application claims the benefit of the provisional application, 60/xxx,xxx, filed on 12/01/01”). The petition under 37 CFR 1.78(a)(6) and the surcharge would not be required because the Office was able to correctly schedule the application for publication with the relationship given.

If the application has issued as a patent, however, the correction cannot be made.
The claim that one application is a continuation or division of another is a benefit claim under 35 U.S.C. 120, 121, or 365(c), and the term of a patent is measured from the prior application’s filing date. Removing the benefit claim under 35 U.S.C. 120, 121, or 365(c) would thus have the effect of lengthening the term of the patent, which cannot be done by Certificate of Correction. Furthermore, removing the benefit claim in a reissue application will not change the term of the patent.

CX8. Applicant filed an application with a claim for the benefit of an earlier copending nonprovisional application. The benefit claim was filed within four months from the actual filing date of the application, but omitted the relationship between the applications. If applicant wants to add the relationship after the four month period would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required? (added 4Feb2005)

Yes, if a benefit claim is submitted without the specific relationship between the nonprovisional applications, and the specific relationship between the nonprovisional applications is subsequently submitted after the expiration of the period, a petition and the surcharge would be required because the Office cannot enter the benefit claim without the relationship between the applications. See Claiming the Benefit of a Prior-Filed Application under 35 U.S.C. 119(e), 120, 121, and 365(c), 1268 Off. Gaz. Patent Office 89 (March 18, 2003).

CX9. Applicant filed an application with a claim for the benefit of an earlier copending nonprovisional application, Application No. 05/123,455. The benefit claim was filed within four months from the actual filing date of the application, but referenced an incorrect application number (should have been 06/123,456. If applicant wants to correct the application number after the four month period would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required? (added 4Feb2005)

Yes, a petition and the surcharge would be required to correctly identify the prior application number because a benefit claim pursuant to 37 CFR 1.78(a)(2) requires identification of the application number and the Office enters the prior application’s application number to schedule the application for publication.

CX10. Applicant filed an application with a claim for the benefit of an earlier copending nonprovisional application, Application No. 10/xxx,xxx, filed under 35 U.S.C. 111(a) on February 27, 2002. The benefit claim was filed within four months from the actual filing date of the application, but referenced an incorrect filing date of the prior application (should have been February 28, 2002). If applicant wants to correct the filing date in the benefit claim after the four month period, would a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) be required? (added 4Feb2005)

No, a petition and the surcharge would not be required because the prior application was correctly identified without the filing date, and since a benefit claim pursuant to 37 CFR 1.78(a)(2) does not require identification of the filing date of an application filed under 35 U.S.C. 111(a).

CX11. Applicant filed an application under 35 U.S.C. 111(a) with a foreign priority claim to an earlier filed Canadian Application No. 2,464,964, filed May 21, 2004. The priority claim was filed within four months from the actual filing date of the application, but referenced an incorrect filing date of the prior application (should have been April 21, 2004). If applicant wants to correct the filing date in the priority claim after the four month period, would a petition under 37 CFR 1.55(c) and the surcharge set forth in 37 CFR 1.17(t) be required? (added 4Feb2005)

Yes, a petition and the surcharge would be required because the filing date was wrong, because a foreign priority claim pursuant to 37 CFR 1.55(a)(1) requires identification of the filing date of the prior application and the Office enters the filing date given to schedule the application for publication.

CX12. Applicant filed an application with a foreign priority claim. The applicant identified the correct filing date, April 21, 2004, of the prior foreign application in the claim, but referenced the incorrect application number of the prior foreign application (should have been 2,464,964, instead of 2,464,999). If applicant wants to correct the application number in the priority claim after the four month period would a petition under 37 CFR 1.55(c) and the surcharge set forth in 37 CFR 1.17(t) be required? (added 4Feb2005)

No, a petition and the surcharge would not be required because the Office was able to properly schedule the application for publication with the filing date given and the prior art date under 35 U.S.C. 102(e) would not be affected.

CX13. Can applicant file an amendment and a petition under 37 CFR 1.78(a) without filing a request for certificate of correction or a reissue application to correct a patent that issued from an application filed on or after November 29, 2000 to add a benefit claim of a prior-filed non-provisional application? (added 4Feb2005)

No, applicant must file either a reissue application or a request for certificate of correction with an amendment adding the specific reference of the prior-filed application to the first sentence of the specification and a petition under 37 CFR 1.78(a)(3) to correct the patent. See MPEP 1401-1460 for more information on reissue applications and MPEP 1481 for more information on requests for certificate of correction.

CX14. Can applicant add a benefit claim of a prior-filed non-provisional application in a later-filed copending application that has been abandoned without filing a petition to revive the later-filed application? (added 4Feb2005)

Yes, a petition to revive the later-filed application is not required when applicant is adding a benefit claim by filing an amendment (or an application data sheet) to add the specific reference of the prior-filed non-provisional application. A petition under 37 CFR 1.78(a)(3), however, is required if the later-filed application is a utility or plant application filed on or after November 29, 2000. If the later-filed application is a utility or plant application filed before November 29, 2000, a petition under 37 CFR 1.182 is required.

  Back to Top 

CY. Projected Publication Date, see Filing Receipt 

 CZ. Provisional applications 

CZ1. Will provisional applications be published under the 18-month publication provisions of AIPA? (Posted on 10/4/01)

No, provisional applications are not eligible for publication.

 CAA. Provisional Rights 

CAA1. Does the American Inventors Protection Act of 1999 address the issue of royalty payments by companies who knowingly violate an invention claimed in a published patent application for infringement that occurs before the patent grant date? (Posted 5/23/00; Renumbered from C3, updated on 2/27/02)

In the American Inventors Protection Act of 1999 (AIPA) Subtitle E - Domestic Publication of Patent Applications Published Abroad, Section 4504 on Provisional Rights addresses this very issue. By the terms of the AIPA, an eventual patentee will be able to obtain a reasonable royalty from any person, having actual notice, who "infringes" the claimed invention during the period beginning on the date of publication of the application and ending on the date the patent is issued. The right to recover a reasonable royalty is based upon actual notice and is only available if the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

CAA2. Does the Office intend to provide guidance as to the meaning of the term "substantially identical" as used in AIPA § 4504 to define when reasonably royalties will be available (35 U.S.C. 154(d)(2))? (Posted 5/23/00; Renumbered from C4)

No, because the USPTO is not charged with administering provisional rights.

CAA3. Applications filed on or after 11/29/00 will be published by the USPTO 18 months after the earliest filing date claimed under title 35 U.S.C., unless the applicant requests an earlier publication or the applicant requests that the application not be published. The patent rights allow for a reasonable royalty from the date of publication to the date of issuance. Can I request that my application be published even though I filed before 11/29/00? (Updated 7/9/01; renumbered from C6; updated 2/27/01)

Yes, provided that the application is pending on November 29, 2000 and your request complies with 37 CFR 1.211. The right to reasonable royalties is subject to a number of conditions: e.g., (1) actual notice of the published application must be given; and (2) the patent claims must be substantially identical to the claims in the published application.

 CAB. Questions Regarding the Publication of Patent Applications 

CAB1. I have some questions regarding publication of patent applications. Who can help me? (Posted on 10/4/01, updated on 2/27/02 and 5/5/03)

For Pre-Grant Publication questions, please contact the PGPub hotline at (703) 605-4283 or PGPub@uspto.gov. The Office of Patent Publication has a help desk that can be reached at (703)305-8283. The Customer Service Representatives in each Technology Center will be able to help you with respect to nonpublication requests and other matters regarding specific applications.

 CAC. Redacted Publication 

CAC1. How do I request for publication of a redacted copy of an application? (Posted on 10/4/01)

If the application filed in the USPTO includes description that is more extensive than any previously filed foreign applications, applicant may submit a redacted copy of the US application for publication, eliminating the description of the invention that is not also contained in any of the foreign corresponding applications. The applicant must file the redacted copy of the application using EFS in compliance with 37 CFR 1.217. If the redacted copy of the application does not meet the EFS requirements, the USPTO will publish the application as unredacted. The redacted copy of an application must be submitted within 16 months after the earliest filing date for which a benefit is sought under title 35, USC.

CAC2. When an applicant submits a request via EFS for a redacted publication, do they need to label the sections in the redacted application as "redacted"? (Posted on 10/4/01)

37 CFR 1.217 requires that a number of items be submitted for a redacted publication, but labeling the redacted sections in the EFS version as redacted is not required.

 CAD. Rejections, 35 U.S.C. 135(c) 

CAD1. Can an examiner reject a claim in an application being examined under 35 U.S.C. 135(b)(2) as being statutorily barred by the publication of another application? (Posted 6/29/00; Renumbered from C5)

Yes. Applicants have one year from the publication date of a published application to present the same or substantially the same claim as a claim in a published application. When the claim is, however, presented later than one year after the publication date, a rejection under 35 USC 135(b)(2) is proper. Thus, a rejection under § 135(b)(2) should be made when:

  1. The effective filing date of the claim in an application being examined is later than the publication date of the published application;
  2. The application being examined is claiming the same invention as claimed in the application publication, i.e., the claim in the application being examined is the same as, or for the same or substantially the same subject matter as, the published claim in the application publication; and
  3. The presentation of the claim in the application being examined is later than one year after the publication date of the published application

Note:

  1. A rejection under 35 USC 102(a) and 102(e) should also be made, since the effective filing date of the claim in the application being examined is later than the publication date of the published application.
  2. The published application could be a U.S. patent application or an international application designating the United States

 CAE. Request for Continued Examination 

CAE1. When an applicant files a Request for Continued Examination (RCE), will the filing cause the application to be subject to publication? (Posted on 10/4/01)

The filing of an RCE on or after 11/29/00 has no impact on publication of the application. The application will be published or not published based on the application filing date. If the application is filed before 11/29/00 (and no CPA has been filed on or after 11/29/00), the application will not be published. If the application (including a CPA) has been filed on or after 11/29/00, the application will be published. A filing of an improper CPA that has been treated as an RCE also has no impact on publication of the application.

CAE2. If I filed a RCE on 3/5/01 for an application that was filed before November 29, 2000, do I have to pay a publication fee? (Posted on 10/4/01, updated 2/27/02)

No, the filing of the RCE does not cause the application to be subject to publication. The applicant should not receive a filing receipt with a projected publication date or a Notice of Publication Fee Due. If applicant receives a filing receipt indicating that the application is projected to be published, applicant should fax the transmittal letter for the RCE and a post card receipt for the RCE to PGPub Division at (703) 305-8568 with an explanation that the application was filed before November 29, 2000 and should not be scheduled for publication. A follow-up phone call should be made to one of the contacts listed in the CAB1 Q&A such as Tammy Koontz at 703-605-4283, Marcia Campbell at 703-305-4322, or Jon Lachel at 703-605-4285. The transmittal letter serves as proof that an RCE not a CPA was filed. If the applicant notifies the Office more than 4 weeks prior to the projected publication date, the application may be removed from publication process, but a later request will not remove the application from publication.

The applicant should reply to the Notice of Publication Fee Due with the following statement.

"I request that this notice be vacated as being in error. The application is not subject to publication as the application was not filed on or after November 29, 2000."

 CAF. Rescinding non-Publication Requests 

CAF1. I would like to rescind a non-publication request. Where should I direct the papers? (Posted on 6/27/01; renumbered from C35; updated 2/27/02 and 5/5/03)

A request to rescind a previously filed nonpublication request may be faxed to the Pre-Grant Publication Division at (703) 305-8568 or mailed to:

Mail Stop PGPUB
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.

CAF2. Does an applicant who rescinded his non-publication request pursuant to 35 U.S.C. 122(b)(2)(B)(ii) prior to filing abroad have any duty to provide notification of the foreign filing under 35 U.S.C. 122(b)(2)(B)(iii) (Posted 5/1/03)?

Yes, notice of foreign filing is still required. Rescission does not nullify a nonpublication request. Rescission revokes the nonpublication request, but it does not erase the fact that the nonpublication request was made because a nonpublication request is more than a request that the application not be published, it is also an affirmative statement that the “invention disclosed in the application has not been and will not be the subject of an application in another country.” If notice of foreign filing wasn't important even when the nonpublication request had been rescinded, then Congress would not have included both sections (ii) and (iii) in the statute (rescission and notice of foreign filing, respectively).

35 U.S.C. 122(b)(2)(B) states (in part):

(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.
(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).

Furthermore, if 35 U.S.C. 122(b)(2)(B)(iii) clearly excluded applications in which a rescission had been made from the those applications in which notice of foreign filing was required, then such applications would not be required to have a notice of foreign filing. The request for nonpublication, however, is more than simply requesting nonpublication, it is an affirmative statement that the application has not been and will not be filed abroad. Therefore, one cannot simply rescind the nonpublication request and have the record be clear as to whether applicant has or will file in another country or under an international treaty ( e.g. , PCT) that requires publication. Since the statute does NOT exclude applications with rescissions from those applications in which a notice of foreign filing is required, all applications in which applicant has informed the Office that they will not “foreign file” via a nonpublication request require a notice from the applicant that, in effect, they changed their mind by providing an affirmative notice of foreign filing. See 35 U.S.C. 122(b)(2)(B)(iii).

An applicant or patentee who merely rescinded their nonpublication request, and did not tell the Office that they foreign filed (and has foreign filed and did not provide notice before the date that is 45 days after the date of foreign filing) should promptly file a petition to revive or consider the application abandoned.

 CAG. Royalty- see Provisional Rights 

 CAH. Voluntary Publication 

CAH1. If my application was filed prior to November 29, 2000, how do I request a voluntary publication? (Posted on 10/4/01)

A request for voluntary publication must be filed via the Electronic Filing System (EFS) in compliance with 37 CFR 1.221. If the applicant submits a request that does not meet the EFS requirements , the request will be dismissed. Any processing fee paid (including those authorized to be charged, e.g., to a deposit account) will be retained. If applicant meets the EFS requirements, but does not include the publication and processing fees as set forth in 37 CFR § 1.18(d) (currently $300) and 1.17(i) (currently $130), respectively, the Office will send the applicant a letter requiring the fees. The publication of the application will be delayed.

Alternatively, if the application was filed before 5/29/00 (and no prior CPA was filed on or after 5/29/00), the application may become eligible for publication, if the applicant files a CPA. The contents of originally filed prior application will be published. The disadvantage to filing a CPA rather than an EFS submission is that any amendments will not be published with the application. A CPA may not be filed in an application filed after May 29, 2000.

For more information on voluntary publication, see Helpful Hints Regarding Publication of Patent Applications ,  1249 OG 83 (August 21, 2001) (available on the Internet at  http://www.uspto.gov/web/offices/dcom/olia/aipa/helpfulhints.htm ).

CAH2. I have sent a request for voluntary publication of an application that was filed before 11/29/00 and was pending on 11/29/00, with the processing fee of $130 and the publication fee of $300, but I didn't submit a copy of the application in compliance with the Office's electronic filing system (EFS) requirements, will the Office refund the publication fee and the processing fee of $130? (Renumbered from C10)

The request is improper, and will not be accepted. The Office will refund the publication fee, but not the processing fee. Should applicant still desire voluntary publication, a new request accompanied by both the publication fee and a second processing fee should be submitted. For more information on the EFS requirements, you may contact the Office's Electronic Business Center at  http://www.uspto.gov/ebc/index.html or 800-786-9199 or 703-308-4357.

CAH3. Is there a form for a voluntary publication request? (Posted on 6/27/01; renumbered from C29)

Yes, it is created by the use of the Electronic Filing System , which is the only means to request voluntary publication of an application. See 37 CFR 1.221(a).

CAH4. How can I get an application filed before 11/29/00 published without using the Electronic Filing System? (Posted on 6/27/01; updated 7/9/01; renumbered from C30)

If the application was filed before May 29, 2000, you may file a continuation under 37 CFR 1.53(b) or (d). If a continuation under 37 CFR 1.53(d) (a CPA) is to be filed, remember that the application as originally filed is used to create the patent application publication, so any amendments will not be reflected in the publication. As a result, applicants are encouraged to file a continuation under 37 CFR 1.53(b) instead of under 37 CFR 1.53(d). If the application was filed after May 29, 2000, only a continuation under 37 CFR 1.53(b) may be filed.

 CAI. What Applications are Subject to Publication? 

CAI1. Will Divisionals, Continuations-in-Part, Continuations, and/or Continued Prosecution Applications (CPA) filed on or after 11/29/00 (the effective date of the eighteen-month publication provisions of the AIPA), based on original applications filed before the effective date, be subject to the mandatory publication? (Renumbered from C2)

Yes. Any nonprovisonal application (other than for a design patent) filed on or after November 29, 2000 is subject to the eighteen-month publication provisions of the AIPA. This includes continuation, divisional, and continuation-in-part applications of applications filed prior to November 29, 2000. It does not matter whether the continuing application was filed under 37 CFR 1.53(b), or as a CPA under 37 CFR 1.53(d). Since a request for a continued examination (RCE) under 37 CFR 1.114 is not a continuing application, filing a RCE of an application filed prior to November 29, 2000 will not make that application subject to the eighteen-month publication provisions of the AIPA.

CAI2. Do reissue applications get published under 35 U.S.C. 122(b)? (Posted on 6/27/01; renumbered C33)

No, they are published with a notice in the Official Gazette - Patents, stating that the application has been filed. Reissue applications are open to public inspection. See 37 CFR 1.11(b). If you receive a filing receipt for a reissue application and the filing receipt has a projected publication date, contact the Customer Service Representative where your application is assigned. They can have the application withdrawn from publication under 35 U.S.C. 122(b).

 CAJ. When is the Publication Fee Required? 

CAJ1. When does the applicant have to pay the publication fee? (Posted on 10/4/01; updated 8/01/02)

For a voluntary publication, early publication, or republication the applicant must pay the publication fee at the time applicant requests such publication (i.e., at the time of filing the EFS submission). For publication of an application filed on or after November 29, 2000, a notification of the publication fee due will be provided in the Notice of Allowance and Fee(s) Due. If the publication (or issue) fee is not timely paid, the application will be abandoned for failure to reply to the Notice of Allowance.

 CAK. Where are Published Applications? 

CAK1. Where can I find patent application publications? (Posted on 6/27/01; renumbered from C24)

When an application is published, the publication will be included on the USPTO home page in the Searchable Patent Databases section (currently  http://www.uspto.gov/patft ) and information on the published application will be included on the public side of PAIR (see http://portal.uspto.gov/external/portal/pair ).

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Last Modified: 1/19/2010 11:39:59 AM