1111 SIR Publication and Effect [R-11.2013]
(pre-2013-03-16) 37 C.F.R. 1.297 Publication of statutory invention registration.
- (a) If the request for a statutory invention registration is approved the statutory invention registration will be published. The statutory invention registration will be mailed to the requester at the correspondence address as provided for in 37 CFR § 1.33(a). A notice of the publication of each statutory invention registration will be published in the Official Gazette.
- (b) Each statutory invention
registration published will include a statement relating to the attributes of a
statutory invention registration. The statement will read as
A statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. No article or advertisement or the like may use the term patent, or any term suggestive of a patent, when referring to a statutory invention registration. For more specific information on the rights associated with a statutory invention registration see 35 U.S.C. 157.
Published SIRs are sequentially numbered in a separate “H” series, starting with number “H1”. For a description of the “kind codes” used on other documents published by the U.S. Patent and Trademark Office, see MPEP § 901.04(a).
In accordance with pre-AIA 35 U.S.C. 157(c) , a published SIR will be treated the same as a U.S. patent for all defensive purposes, usable as a reference as of its filing date in the same manner as a patent. A SIR is a “constructive reduction to practice” under pre-AIA 35 U.S.C. 102(g) and “prior art” under all applicable sections of 35 U.S.C. 102 including 35 U.S.C. 102(a)(2) and pre-AIA 35 U.S.C. 102(e). SIRs are classified, cross-referenced, and placed in the search files, disseminated to foreign patent offices, stored in U.S. Patent and Trademark Office computer data bases, made available in commercial data bases, and announced in the Official Gazette.
The waiver of patent rights to the subject matter claimed in a statutory invention registration takes effect on publication pre-AIA 37 CFR 1.293(c)) and may affect the patentability of claims in related applications without SIR requests, such as divisional or other continuing applications, since the waiver of patent rights is effective for all inventions claimed in the SIR and would effectively waive the right of the inventor to obtain a patent on the invention claimed in the same application or on the same invention claimed in any other application not issued before the publication date of the SIR. If an application containing generic claims is published as a SIR, the waiver in that application applies to any other related applications to the extent that the same invention claimed in the SIR is claimed in the other application. Examiners should apply standards similar to those applied in making “same invention” double patenting determinations to determine whether a waiver by an inventor to claims in a SIR precludes patenting by the same inventor to subject matter in any related application. If the same subject matter is claimed in an application and in a published statutory invention registration naming a common inventor, the claims in the application should be rejected as being precluded by the waiver in the statutory invention registration. A rejection as being precluded by a waiver in a SIR cannot be overcome by a terminal disclaimer.
The holder of a SIR will not be able to file a reissue application to recapture the rights, including the right to exclude others from making, using, selling, offering to sell, or importing the invention, that were waived by the initial publication of the SIR.