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103    Right of Public To Inspect Patent Files and Some Application Files [R-11.2013]

37 C.F.R. 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.
  • (b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under §1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.
  • (c) All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette. The announcement shall include at least the date of the request, if any, the reexamination request control number or the Director initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.
  • (d) All papers or copies thereof relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to inspection by the general public, and copies may be furnished upon paying the fee therefor.
  • (e) Except as prohibited in § 41.6(b), § 42.14 or § 42.410(b), the file of any interference or trial before the Patent Trial and Appeal Board is open to public inspection and copies of the file may be obtained upon payment of the fee therefor.

37 C.F.R. 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) for international 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). 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 application that has been published as a patent application publication 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 application that has been published as a patent application publication 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, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2). 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, or 365 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, or an international patent application that was published in accordance with PCT Article 21(2). 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, or 365 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, or an international patent application publication that was published in accordance with PCT Article 21(2). 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, or an international patent application publication that was published in accordance with PCT Article 21(2). 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, or 365 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, or an international patent application publication that was published in accordance with PCT Article 21(2), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2), 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)) 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 or 365 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).

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I.   ACCESS TO IMAGE FILE WRAPPER (IFW) APPLICATIONS

The Image File Wrapper (IFW) system uses image technology to replace the paper processing of patent applications in the Office. Paper components of these application files (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) have been scanned to create electronic image files. For patent applications in the IFW system, the IFW file is the Official file and no access is granted to the original paper document sheets used to create the IFW file. All processing and examination is conducted using the electronic images instead of the paper source documents.

If an IFW file has been created for a patented application, published application, or an application to which a patented or published application claims domestic priority, the IFW file (with the exception of non-patent literature) is accessible through public PAIR. All patent applications filed after June 30, 2003, have been scanned into the IFW system and will be available in public PAIR as soon as they have been published or patented. Pending applications filed before June 30, 2003, are scanned into IFW as incoming papers are received in the Office.

II.   PUBLISHED U.S. PATENT APPLICATIONS

37 C.F.R. 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) for international applications) may be available in the following situations:

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  • (ii) Published abandoned applications. The file of an abandoned application that has been published as a patent application publication 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 application that has been published as a patent application publication 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.

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If a patent application has been published pursuant to 35 U.S.C. 122(b), then a copy of the specification, drawings, and all papers relating to the file of that published application (whether abandoned or pending) may be provided to any person upon written request and payment of the fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii) and (iii). Pursuant to 35 U.S.C. 374, the publication by the International Bureau of an international application designating the United States is deemed to be a publication under 35 U.S.C. 122(b); note that the U.S. is automatically designated in all international applications filed on or after January 1, 2004.

If a redacted copy of the application was used for the patent application publication, the copy of the application will be limited to the redacted copy of the application and the redacted materials provided under 37 CFR 1.217(d).

See paragraph I., above, for information pertaining to access to Image File Wrapper (IFW) applications. Published applications maintained in the IFW system are available on the USPTO Web site in the public Patent Application Information Retrieval (PAIR) system. If the published patent application is pending and it is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection. Only copies of the application file may be obtained pursuant to 37 CFR 1.14(a)(1)(iii). If the published patent application is abandoned, the entire application is available to the public for inspection and obtaining copies. See 37 CFR 1.11(a).

III.   UNPUBLISHED ABANDONED AND PENDING APPLICATIONS (INCLUDING PROVISIONAL APPLICATIONS) THAT ARE IDENTIFIED

37 C.F.R. 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) for international applications) may be available in the following situations:

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  • (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, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2). 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, or 365 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, or an international patent application that was published in accordance with PCT Article 21(2). 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)).

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  • (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, or an international patent application publication that was published in accordance with PCT Article 21(2). 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.

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Abandoned applications meeting the requirements of 37 CFR 1.14(a)(1)(iv) and any application that is open to the public under 37 CFR 1.11 may be obtained by any person upon written request to the File Information Unit (FIU) without the specific written authority of the inventor, applicant in an application filed on or after September 16, 2012, assignee, attorney or agent of record or Director. The following abandoned applications are available from the FIU: (A) An abandoned application referred to in a U.S. patent application publication or U.S. patent; and (B) a pending File Wrapper Continuation application (FWC) filed under former 37 CFR 1.62 of an abandoned application that meets the requirements of 37 CFR 1.14(a)(1)(iv). Under former 37 CFR 1.62(f), where access is permitted to an application within the file wrapper of a FWC application, the applicant has waived the right to keep all earlier filed applications in the same file wrapper in confidence.

37 CFR 1.14(a)(1)(i) relates only to United States applications that are open to public inspection. See 37 CFR 1.14(g)(3)-(5) for access to international applications where the U.S. is designated. See also MPEP § 110. If an abandoned application is referred to in an international application that is published in accordance with PCT Article 21(2), access to the abandoned application is available under 37 CFR 1.14(a)(1)(iv).

An abandoned non-IFW application identified in a U.S. patent application publication, U.S. patent or a U.S. application that is open to public inspection may be ordered for inspection by any member of the public through the FIU. An abandoned file received by a member of the public must be returned to the charge counter in the FIU before closing the same day it is received. If the abandoned application is contained within a pending FWC application, the requester will generally be directed to the appropriate Technology Center (TC) to inquire as to the availability of the pending FWC application. If the pending FWC application is available, it will be forwarded to the FIU for the requester to pick-up. See paragraph I., above, for information pertaining to access to IFW applications.

The incorporation by reference of a pending application in a U.S. patent application publication, a U.S. patent, a published international application published in accordance with PCT Article 21(2), or a statutory invention registration constitutes a special circumstance under 35 U.S.C. 122 warranting that a copy of the application-as-filed be provided upon written request as provided in 37 CFR 1.14(a)(1)(iv). In addition, if a U.S. patent application publication, a U.S. patent, or a published international application claims benefit under 35 U.S.C. 119(e), 120, 121, or 365 to a U.S. patent application, a copy of that application-as-filed may be provided upon written request, or available through the public PAIR system if the application is maintained in the IFW system. A benefit claim in an international application that does not designate the United States is not a claim under 35 U.S.C. 119(e), 120, 121 or 365. The written request, including a copy of the page of the patent application publication, U.S. patent, or published international application including the incorporation by reference or specific reference under 35 U.S.C. 119(e), 120, 121, or 365, and the requisite fee set forth in 37 CFR 1.19(b)(1), should be directed to the Certification Division. However, an incorporation by reference that is made as part of a transmittal letter for the application, or that is a part of the text of the application that has been canceled and which does not appear as part of the printed patent, may not be relied upon to obtain a copy of the application as originally filed. A petition for access with an explanation of special circumstances other than the not-printed incorporation by reference will be required. See 37 CFR 1.14(a)(1)(vii).

Copies of a patent application-as-filed and the contents of a patent application file wrapper may be ordered on-line or requested by facsimile from the Certification Division. Payment of the appropriate fee under 37 CFR 1.19(b) may be made by USPTO Deposit Account, American Express®, Discover®, MasterCard®, or Visa® by any person having a right to access to the originally filed application or patent. The Office does not provide for access to non-United States applications.

Form PTO/SB/68 may be used to request access.

Form PTO/SB/68. Request for Access to an Abandoned Application Under 37 CFR 1.14
Privacy Act Statement

IV.   ACCESS WHERE PART OF AN APPLICATION IS INCORPORATED BY REFERENCE IN A U.S. PATENT APPLICATION PUBLICATION OR A U.S. PATENT

37 CFR 1.14(a)(1)(vi) permits a member of the public, without a petition for access, to obtain a copy of a pending application as originally filed, when the application is incorporated by reference in a U.S. patent application publication or a U.S. patent, upon the filing of an appropriate request and the payment of the required fee. However, if only part of the application is incorporated by reference, for example, where an application states, “the disclosure of a valve on page 5, lines 5-35, of application No. XX/YYY,YYY, is hereby incorporated by reference,” then a petition for access is required to obtain access to or a copy of the incorporated material. Incorporation by reference of part of an application in a U.S. patent application publication or a U.S. patent constitutes a special circumstances under 35 U.S.C. 122(a) warranting that access to that part of the original disclosure of the application be granted on petition. The incorporation by reference will be interpreted as a waiver of confidentiality of only that part of the original disclosure as filed, and not the entire application file. In re Gallo, 231 USPQ 496 (Comm’r Pat. 1986). If applicant objects to access to the entire application file, applicant must file two copies of the information incorporated by reference along with the objection. In the example given, applicant would be required to provide two copies of page 5, lines 5-35 of the XX/YYY,YYY application. Failure to provide the material within the time period provided will result in the entire application content (including prosecution history) being made available to the petitioner. The Office will not attempt to separate the noted materials from the remainder of the application. Compare In re Marsh Eng’g. Co., 1913 C.D. 183 (Comm’r Pat. 1913).

V.    PETITION FOR ACCESS BY THIRD PARTY

37 C.F.R. 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) for international applications) may be available in the following situations:

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  • (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, or 365 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, or an international patent application publication that was published in accordance with PCT Article 21(2), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2), 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 (h)) or a power to inspect (see paragraph (c)) is necessary to obtain the application, or a copy of the application.

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  • (i) Access or copies in other circumstances. The Office, either sua sponte or on petition, may also provide access or copies of all or part of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include:
    • (1) The fee set forth in § 1.17(g); and
    • (2) A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.

Any interested party may file a petition, accompanied by the petition fee, to the Director for access to an application. Inasmuch as the post office address is necessary for the complete identification of the petitioner, it should always be included complete with ZIP Code number. In addition, telephone and facsimile numbers should be provided to expedite handling of the petition. Petitions for access are handled in the Office of Patent Legal Administration, unless the application is involved in an interference or trial before the Patent Trial and Appeal Board. See MPEP § 1002.02(b).

The petition may be filed either with proof of service of copy upon the inventor, applicant in an application filed on or after September 16, 2012, assignee of record, or attorney or agent of record in the application to which access is sought, or the petition may be filed in duplicate, in which case the duplicate copy will be sent by the Office to the inventor, applicant in an application filed on or after September 16, 2012, assignee of record, or attorney or agent of record in the application (hereinafter “applicant”). A separate petition, with fee, must be filed for each application file to which access is desired. Each petition should show not only why access is desired, but also why petitioner believes he or she is entitled to access. The applicant will normally be given a limited period such as 3 weeks within which to state any objection to the granting of the petition for access and reasons why it should by denied. If applicant states that he or she has no objection to the requested access, the petition will be granted. If objection is raised or applicant does not respond, the petition will be decided on the record. If access is granted to the application, any objections filed by the applicant will be available to the petitioner since these papers are in the application file. If access to the application is denied, petitioner will not receive copies of any objections filed by the applicant. A determination will be made whether “special circumstances” are present which warrant a grant of access under 35 U.S.C. 122. See below when the application is the basis of a claim for benefit of an earlier filing date under 35 U.S.C. 120 or part of the application is incorporated by reference in a United States patent. “Special circumstances” could be found where an applicant has relied upon his or her application as a means to interfere with a competitor’s business or customers. See, e.g., In re Crossman, 187 USPQ 367 (PTO Solicitor 1975); and In re Trimless Cabinets, 128 USPQ 95 (Comm’r Pat. 1960). Furthermore, “special circumstances” could be found where an attorney or agent of record in an application in which a provisional double patenting rejection is made does not have power of attorney in the copending application having a common assignee or inventor. However, a more expeditious means of obtaining access would be to obtain power to inspect from an assignee or inventor. See MPEP §§ 104 and 106.01.

VI.   ACCESS WHERE PATENT CLAIMS 35 U.S.C. 119(e), 120, 121, or 365 BENEFIT

37 C.F.R. 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) for international applications) may be available in the following situations:

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  • (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, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2). 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, or 365 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, or an international patent application that was published in accordance with PCT Article 21(2). 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, or 365 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, or an international patent application publication that was published in accordance with PCT Article 21(2). 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, or an international patent application publication that was published in accordance with PCT Article 21(2). 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.

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Whenever a patent relies on the filing date of an earlier but still pending application, the Office permits an applicant to obtain a copy of the prior application, either as originally filed or of the pending file history, upon written request (to the Office of Public Records) and payment of the appropriate fee. Furthermore, after publication of an international application that was published in accordance with PCT Article 21(2), a U.S. patent, a U.S. patent application publication, or a statutory invention registration, the file contents of any abandoned application identified or relied upon in such a publication are available pursuant to 37 CFR 1.14(a)(1)(iv). If the application is pending and benefit of the application is claimed pursuant to 35 U.S.C.119(e), 120, 121 or 365 in such a patent document, then the file contents of the application are available pursuant to 37 CFR 1.14(a)(1)(v). Such a patent application is available through the public PAIR system if the application is maintained in the IFW system.

VII.   ACCESS TO PROVISIONAL APPLICATIONS

In provisional applications, access or certified copies will only be given to parties with written authority from a named inventor, the assignee of record, the attorney or agent of record, or, for an application filed on or after September 16, 2012, an applicant other than an inventor. Since provisional applications do not require an oath or declaration, there may be no power of attorney in the application. If there is no power of attorney in the provisional application, a certified copy requested by the registered attorney or agent named in the papers accompanying the provisional application papers will be supplied to the correspondence address of the provisional application. Provisional applications are also available in the same manner as any other application. For example, an application that is relied upon for priority in a U.S. patent and is abandoned is available under 37 CFR 1.14(a)(1)(iv) and, as a result may be available through public PAIR.

VIII.   APPLICATION AT THE PATENT TRIAL AND APPEAL BOARD

The Patent Trial and Appeal Board handles all requests for access to, or copies of Office records directly related to, applications involved in interferences or trials. See 37 CFR 41.109.

IX.   DEFENSIVE PUBLICATIONS

The entire application file of a defensive publication is available to the public for inspection and obtaining copies. See MPEP § 711.06.

X.   REISSUE APPLICATIONS

37 CFR 1.11(b) opens reissue applications to inspection by the general public. 37 CFR 1.11(b) also provides for announcement of the filings of reissue applications in the Official Gazette (except for continued prosecution applications filed under 37 CFR 1.53(d)). This announcement gives interested members of the public an opportunity to submit to the examiner information pertinent to patentability of the reissue application.

IFW reissue application files are open to inspection by the general public by way of Public PAIR via the USPTO Internet site. In viewing the images of the files, members of the public will be able to view the entire content of the reissue application file history. To access Public PAIR, a member of the public would (A) go to the USPTO Web site at http://www.uspto.gov, (B) click on "Check Status" under the "Patents" column, (C) click on Public PAIR, and (D) enter the reissue application number.

XI.   REQUEST FOR REEXAMINATION

An announcement of the filing of each request for reexamination in which the entire fee has been paid, and of each reexamination ordered at the initiative of the Director under 37 CFR 1.520, will be published in the Official Gazette. A reexamination file is normally NOT open to inspection by the general public until the file has been scanned into the IFW system, at which point the file is open to inspection by the public by way of Public PAIR via the USPTO Internet site. In viewing the images of the reexamination proceedings, members of the public will be able to view the entire contents of the reexamination file with the exception of non-patent literature. See also MPEP § 2232.

XII.   DECISIONS BY THE DIRECTOR

37 C.F.R. 1.14   Patent applications preserved in confidence.

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  • (e) Decisions by the Director. Any decision by the Director that would not otherwise be open to public inspection may be published or made available for public inspection if:
    • (1) The Director believes the decision involves an interpretation of patent laws or regulations that would be of precedential value; and
    • (2) The applicant is given notice and an opportunity to object in writing within two months on the ground that the decision discloses a trade secret or other confidential information. Any objection must identify the deletions in the text of the decision considered necessary to protect the information, or explain why the entire decision must be withheld from the public to protect such information. An applicant or party will be given time, not less than twenty days, to request reconsideration and seek court review before any portions of a decision are made public under this paragraph over his or her objection

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37 C.F.R. 41.6   Public availability of Board records.

  • (a) Publication.
    • (1) Generally. Any Board action is available for public inspection without a party’s permission if rendered in a file open to the public pursuant to § 1.11 of this title or in an application that has been published in accordance with §§ 1.211 to 1.221 of this title. The Office may independently publish any Board action that is available for public inspection.
    • (2) Determination of special circumstances. Any Board action not publishable under paragraph (a)(1) of this section may be published or made available for public inspection if the Director believes that special circumstances warrant publication and a party does not, within two months after being notified of the intention to make the action public, object in writing on the ground that the action discloses the objecting party’s trade secret or other confidential information and states with specificity that such information is not otherwise publicly available. If the action discloses such information, the party shall identify the deletions in the text of the action considered necessary to protect the information. If the affected party considers that the entire action must be withheld from the public to protect such information, the party must explain why. The party will be given time, not less than twenty days, to request reconsideration and seek court review before any contested portion of the action is made public over its objection.
  • (b) Record of proceeding.
    • (1) The record of a Board proceeding is available to the public unless a patent application not otherwise available to the public is involved.
    • (2) Notwithstanding paragraph (b)(1) of this section, after a final Board action in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the public if any involved file is or becomes open to the public under § 1.11 of this title or an involved application is or becomes published under §§ 1.211 to 1.221 of this title.

37 CFR 1.14(e) states the conditions under which significant decisions by the Director that would not otherwise be open to public inspection will be made available to the public. 37 CFR 41.6 describes the procedure for making a decision of the Patent Trial and Appeal Board available to the public. These sections are applicable to decisions deemed by the Director to involve an interpretation of patent laws or regulation that would be of significant precedential value, where such decisions are contained in either pending or abandoned applications or in Board records not otherwise open to the public. It is applicable whether or not the decision is a final decision of the U.S. Patent and Trademark Office.

37 CFR 1.14(e) and 37 CFR 41.6 are considered to place a duty on the U.S. Patent and Trademark Office to identify significant decisions and to take the steps necessary to inform the public of such decisions, by publication of such decisions, in whole or in part. It is anticipated, however, that no more than a few dozen decisions per year will be deemed of sufficient importance to warrant publication under the authority of this section.

XIII.   FOIA REQUESTS

37 C.F.R. 102.4   Requirements for making requests.

  • (a) A request for USPTO records that are not customarily made available to the public as part of USPTO’s regular informational services must be in writing, and shall be processed under FOIA, regardless of whether FOIA is mentioned in the request. Requests should be sent to the USPTO FOIA Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 (records FOIA requires to be made regularly available for public inspection and copying are addressed in § 102.2(c)). For the quickest handling, the request letter and envelope should be marked “Freedom of Information Act Request.” For requests for records about oneself, § 102.24 contains additional requirements. For requests for records about another individual, either a written authorization signed by that individual permitting disclosure of those records to the requester or proof that individual is deceased (for example, a copy of a death certificate or an obituary) facilitates processing the request.
  • (b) The records requested must be described in enough detail to enable USPTO personnel to locate them with a reasonable amount of effort. Whenever possible, a request should include specific information about each record sought, such as the date, title or name, author, recipient, and subject matter of the record, and the name and location of the office where the record is located. Also, if records about a court case are sought, the title of the case, the court in which the case was filed, and the nature of the case should be included. If known, any file designations or descriptions for the requested records should be included. In general, the more specifically the request describes the records sought, the greater the likelihood that USPTO will locate those records. If the FOIA Officer determines that a request does not reasonably describe records, the FOIA Officer will inform the requester what additional information is needed or why the request is otherwise insufficient. The FOIA Officer also may give the requester an opportunity to discuss the request so that it may be modified to meet the requirements of this section.

Many decisions of the Office are available on the FOIA section of the USPTO Web site at http://www.uspto.gov/ip/boards/foia_rr/index.jsp. See 37 CFR Part 102, Subpart A, “Freedom of Information Act,” for rules pertaining to FOIA requests.

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Last Modified: 03/27/2014 10:10:32