101 General [R-07.2022]

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

(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.
(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  - (A) An application shall not be published if that application is—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 ;
    - (iii) a provisional application filed under section 111(b); or
    - (iv) an application for a design patent filed under chapter 16.
  - (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international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).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 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.
    - (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 Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the 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.
(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.
(d) NATIONAL SECURITY.— No application for patent shall be published under subsection (b)(1) if the publication or disclosure of such invention would be detrimental to the national security. The Director shall establish appropriate procedures to ensure that such applications are promptly identified and the secrecy of such inventions is maintained in accordance with chapter 17 .
(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
- (1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—
  - (A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
  - (B) the later of—
    - (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
    - (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
- (2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
  - (A) set forth a concise description of the asserted relevance of each submitted document;
  - (B) be accompanied by such fee as the Director may prescribe; and
  - (C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

18 U.S.C. 2071 Concealment, removal, or mutilation generally.

(a) Whoever willfully and unlawfully conceals, removes, mutilates, obliterates, or destroys, or attempts to do so, or, with intent to do so takes and carries away any record, proceeding, map, book, paper, document, or other thing, filed or deposited with any clerk or officer of any court of the United States, or in any public office, or with any judicial or public officer of the United States, shall be fined under this title or imprisoned not more than three years, or both.
(b) Whoever, having the custody of any such record, proceeding, map, book, document, paper, or other thing, willfully and unlawfully conceals, removes, mutilates, obliterates, falsifies, or destroys the same, shall be fined under this title or imprisoned not more than three years, or both; and shall forfeit his office and be disqualified from holding any office under the United States. As used in this subsection, the term “office” does not include the office held by any person as a retired officer of the Armed Forces of the United States.

37 CFR 1.11 Files open to the public.

(a) The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2). If an application was published in redacted form pursuant to § 1.217, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. See § 2.27 of this title for trademark files.

*****

37 CFR 1.14 Patent applications preserved in confidence.

(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
- (1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
  - (i) Patented applications and statutory invention registrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in § 1.11. A copy of the patent application-as-filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).
  - (ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b).
  - (iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
  - (iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)).
  - (v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
  - (vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
  - (vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.
- (2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public (i.e., status information) includes:
  - (i) Whether the application is pending, abandoned, or patented;
  - (ii) Whether the application has been published under 35 U.S.C. 122(b);
  - (iii) The application “numerical identifier” which may be:
    - (A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
    - (B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and
  - (iv) Whether another application claims the benefit of the application (i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications (e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).

*****

All U.S. Patent and Trademark Office employees are legally obligated to preserve pending applications for patents in confidence until they are published or patented in accordance with 35 U.S.C. 122 and 37 CFR 1.14. 35 U.S.C. 122 and 18 U.S.C. 2071 impose statutory requirements which cover the handling of patent applications and related documents. Suspension, removal, and even criminal penalties may be imposed for violations of these statutes.

Any employee having custody of a patent application or related documents will be responsible for maintaining confidentiality and otherwise conforming with the requirements of law. No part of any application or paper related thereto should be reproduced or copied except for official purposes. Application files must not be displayed or handled so as to permit perusal or inspection by any unauthorized member of the public.

Whenever a paper application (non-electronic), or an artifact file in an Image File Wrapper (IFW) application, is removed from the operating area having custody of the file, a charge on the Patent Data Portal system must be properly and promptly made. Applications, artifact files, and official papers for which there is no electronic file must not be placed in desk drawers or other locations where they might be easily overlooked or are not visible to authorized personnel. Interoffice mail must be sent in appropriate envelopes.

Official papers are accepted only at the Customer Service Window, except for certain papers that have been specifically exempted from the central delivery policy. See MPEP § 502. Appropriate corrective action for IFW messages with faulty identifications or incorrect routing should be taken at once to ensure the prompt receipt thereof at the appropriate destination.

All U.S. Patent and Trademark Office employees should bear in mind at all times the critical importance of ensuring the confidentiality and accessibility of patent application files and related documents, and in addition to the specific procedures referred to above, should take all appropriate action to that end.

Examiners, classifiers, and other U.S. Patent and Trademark Office employees who assist public searchers by outlining or indicating a field of search, should also bear in mind the critical importance of ensuring the confidentiality of information revealed by a searcher when requesting field of search assistance. See MPEP § 1701. Statutory requirements and curbs regarding the use of information obtained by an employee through government employment are imposed by 5 CFR 2635.701- 2635.703 and 18 U.S.C. 1905.

Examiners, while holding interviews with attorneys and applicants, should be careful to prevent exposures of files and drawings of other applicants.

Extreme care should be taken to prevent inadvertent and/or inappropriate disclosure of the filing date or application number of any application. This applies not only to Office actions but also to notes in the file or in the artifact folder of IFW applications.

TELEPHONE AND IN-PERSON REQUESTS FOR INFORMATION CONCERNING PENDING OR ABANDONED APPLICATIONS

37 CFR 1.14 Patent applications preserved in confidence.

(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
- *****
- (2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public (i.e., status information) includes:
  - (i) Whether the application is pending, abandoned, or patented;
  - (ii) Whether the application has been published under 35 U.S.C. 122(b);
  - (iii) The application “numerical identifier” which may be:
    - (A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
    - (B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and
  - (iv) Whether another application claims the benefit of the application (i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications (e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).

*****

Except as provided in 35 U.S.C. 122(b), no information concerning pending or abandoned patent applications (except applications which have been published, reissue applications and reexamination proceedings) may be given to the public without appropriate written authorization. See 35 U.S.C. 122 and 37 CFR 1.14.

When handling an incoming telephone call or an in-person request for information regarding an unpublished pending or abandoned patent application, no information should be disclosed until the identity of the requester can be adequately verified as set forth below. Particular care must be exercised when a request is made for the publication date or publication number, or issue date and patent number assigned to a pending patent application. If the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, an inventor, the assignee of record, or the attorney or agent of record.

The following procedure should be followed before any information about an unpublished pending or abandoned patent application is given over the telephone:

(A) Obtain the caller’s full name, the application number, and the caller’s telephone number. Ask the caller if there is a patent practitioner (attorney or agent) of record.
- (1) If there is a patent practitioner of record, ask for the patent practitioner's registration number. If the registration number is not known, ask for the name of the patent practitioner of record. Inform the caller that a patent practitioner of record will be called after verification of their identity and that information concerning the application will be released to that patent practitioner.
- (2) If there is no patent practitioner of record, ask the caller why they are entitled to information concerning the application. If the caller identifies theirself as an inventor, an applicant or an authorized representative of the assignee of record, ask for the correspondence address of record and inform caller that their association with the application must be verified before any information concerning the application can be released and that they will be called back. If the caller indicates that they are not an inventor, applicant or an authorized representative of the assignee of record then status information may only be given pursuant to MPEP § 102.
(B) Verify that information concerning the application can be released by checking Patent Data Portal or the application file.
- (1) If the caller stated there was a patent practitioner of record, Patent Data Portal should be used to verify the registration number given or to obtain the registration number of a patent practitioner of record. Then Patent Data Portal (using the registration number) should be used to obtain a telephone number for a patent practitioner of record.
- (2) If the caller identified theirself as an inventor, applicant or an authorized representative of the assignee of record, Patent Data Portal should be used to verify the correspondence address of record. Patent Data Portal should be used to determine if there is a patent practitioner of record. If there is a patent practitioner of record, their telephone number can be obtained from Patent Data Portal.
(C) Return the call using the telephone number as specified below.
- (1) If a patent practitioner is of record in the application, information concerning the application should only be released by calling the patent practitioner's telephone number obtained from Patent Data Portal.
- (2) If the inventor, applicant or an authorized representative of the assignee of record requests information, and there is no patent practitioner of record and the correspondence address of record has been verified, information concerning the application can be released to the caller using the telephone number given by the caller. If the caller’s association with the application cannot be verified, no information concerning the application will be released. However, the caller should be informed that the caller’s association with the application could not be verified.

In handling an in-person request, ask the requester to wait while verifying their identification as in (B) above.

[top]

This page is owned by Patents.

Last Modified: 02/16/2023 12:58:14