Strategic Plan > Index to Action Papers > Eighteen-Month Publication - Elimination of Non-Publication and Redaction Exceptions and Exclusions of Plant Applications

Action:

The USPTO should eliminate the non-publication and redacted publication exceptions set forth in 35 U.S.C. § 122(b)(2)(B) to the 18-month publication provisions.  Further, the USPTO should exclude plant applications from the 18-month publication provisions.

Background Information:

The practices for the non-publication and redaction exceptions to 18-month publication are extremely costly for the USPTO and have caused many processing problems for the Office and many applicants.  The USPTO has to check each application for a non-publication request that creates processing delays and publication errors.  Many applicants have filed improper non-publication requests and rescissions, and failed to file timely notifications of foreign filings.  The redaction procedures are complicated for applicants and labor intensive for the USPTO to process the redaction requests and to maintain two different sets of records for redacted applications.  Only a handful of applicants have requested redacted publication and complied with all of the requirements.  The proposed amendment would simplify the publication procedures and reduce processing delays and errors.

The USPTO currently prepares each plant application for publication and does not publish most of the plant applications because the average pendency of plant applications is short and most plant applications are no longer pending at the end of the 18-month period.  Furthermore, since plant applications are not published in color, the benefit of the publication of plant applications is limited.  The proposed amendment would save USPTO resources for preparing plant applications for publication and for publishing plant applications that are still pending at the end of the 18-month period.

Options Considered:

Option #1:

  Eliminate the non-publication and redaction exceptions, and adopt the exception for plant applications.  

Option #2:

  Adopt the plant application exception only and provide changes to 35 U.S.C. § 122(b) to implement the continuation initiative, which requires publication of all utility applications claiming continuity under 35 U.S.C. § 120, 121, or 365(c) without exception. 

USPTO Recommended Course of Action: 

The USPTO will consider adopting Option 1 by amending 35 U.S.C. § 122(b)(2) to delete subsection 122(b)(2)(B) and add an exception for plant applications.

Proof of Concept (POC):

POC is not a viable option for this initiative.  This proposal has received approval from certain members of the user community and was not opposed by any of the user group associations.  Further, conducting a pilot of the proposal is not viable given the need for a statutory revision in order to implement the proposal. 

Timing:

The USPTO will first publish the proposed legislative change for public comment.  After receiving public comment, the USPTO will do an analysis of implementation options based on public comments received, and the corresponding business-impact analysis.  Following the analysis, the USPTO will publish a notice setting out proposals/options to implement the elimination of the publication exceptions and the exclusion of plant applications (Green Paper).  It is expected that the Green Paper will be published in the Fall of 2003.  After a public comment period on the Green Paper, a final report on implementation (White Paper) will be published (Spring of 2004).

See attachment for proposed statutory changes.

Attachment A:  Proposed Changes to 35 U.S.C. § 122(b) for Option #1

Section 122(b) of title 35, United States Code, is amended to read as follows:

35 U.S.C. § 122 Confidential status of applications; publication of patent applications.

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(b) PUBLICATION. -

      (1) IN GENERAL. -

(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title.  At the request of the applicant, an application may be published earlier than the end of such 18-month period.

(B) No information concerning published patent applications shall be made available to the public except as the Director determines.

(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.

      (2) EXCEPTIONS. -

An application shall not be published if that application is -

(A) no longer pending;

(B) subject to a secrecy order under section 181 of this title;

(C) a provisional application filed under section 111(b) of this title;

(D) an application for a design patent filed under chapter 16 of this title; or

(E) an application for a plant patent filed under chapter 15 of this title.

*****

Attachment B:  Proposed Changes to 35 U.S.C. § 122(b) for Option #2

Note: the changes in § 122(b)(2)(B)(vi) need to be harmonized with the continuation initiative.

Section 122(b) of title 35, United States Code, is amended to read as follows:

35 U.S.C. § 122  Confidential status of applications; publication of patent applications.

*****

(b) PUBLICATION. -

      (1) IN GENERAL. -

(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title.  At the request of the applicant, an application may be published earlier than the end of such 18-month period.

(B) No information concerning published patent applications shall be made available to the public except as the Director determines.

(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.

      (2) EXCEPTIONS. -

            (A) An application shall not be published if that application is -

(i) no longer pending;

(ii) subject to a secrecy order under section 181 of this title;

(iii) a provisional application filed under section 111(b) of this title;

(iv) an application for a design patent filed under chapter 16 of this title; or

(v) an application for a plant patent filed under chapter 15 of this title.

(B)(i) 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 application shall not be published as provided in paragraph (1).

(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 United States 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).

(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign-filed applications corresponding to an application filed in the Patent and Trademark Office or the description of the invention in such foreign-filed applications is less extensive than the application or description of the invention in the application filed in the United States Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the United States Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a foreign country.  The Director may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title.  The provisions of section 154(d) shall not apply to a claim if the description of the invention published in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim.

(vi) The provisions of clauses (i) though (v) shall not apply to any application that contains or is amended to contain a reference to an earlier application or applications under sections 120, 121, or 365(c) of this title.

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