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1120    Eighteen-Month Publication of Patent Applications [R-11.2013]

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.—
      • (A) An application shall not be published if that application is—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; or
        • (iv) an application for a design patent filed under chapter 16 of this title.

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37 C.F.R. 1.211   Publication of applications.

  • (a) Each U.S. national application for patent filed in the Office under 35 U.S.C. 111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless:
    • (1) The application is recognized by the Office as no longer pending;
    • (2) The application is national security classified (see § 5.2), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
    • (3) The application has issued as a patent in sufficient time to be removed from the publication process; or
    • (4) The application was filed with a nonpublication request in compliance with § 1.213(a).
  • (b) Provisional applications under 35 U.S.C. 111(b) shall not be published, and design applications under 35 U.S.C. chapter 16 and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
  • (c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 37 CFR 1.16(a) or § 37 CFR 1.16(c)) and any English translation required by § 1.52(d). The Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with § 1.52 and an abstract ( § 1.72(b)), drawings in compliance with § 1.84, a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and the inventor's oath or declaration or application data sheet containing the information specified in § 1.63(b).
  • (d) The Office may refuse to publish an application, or to include a portion of an application in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
  • (e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.

Pre-AIA 37 C.F.R. 1.211  Publication of applications

  • (a) Each U.S. national application for patent filed in the Office under 35 U.S.C. 111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earli¬est filing date for which a benefit is sought under title 35, United States Code, unless:
    • (1) The application is recognized by the Office as no longer pending;
    • (2) The application is national security classified (see § 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
    • (3) The application has issued as a patent in sufficient time to be removed from the publication process; or
    • (4) The application was filed with a nonpublication request in compliance with § 1.213(a).
  • (b) Provisional applications under 35 U.S.C. 111(b) shall not be published, and design applications under 35 U.S.C. chapter 16 and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
  • (c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or 1.16(c)), any English translation required by § 1.52(d), and an executed oath or declaration under § 1.63. The Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with § 1.52 and an abstract (§ 1.72(b)), drawings in compliance with § 1.84, and a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and until any petition under § 1.47 is granted.
  • (d) The Office may refuse to publish an application, or to include a portion of an application in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
  • (e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.

For applications filed on or after September 16, 2012, 37 CFR 1.211(c) does not require an executed oath or declaration for publication of the application since applicants may postpone filing the inventor’s oath or declaration until payment of the issue fee. The Office may delay publishing any application until it includes the inventor’s oath or declaration or application data sheet containing the information specified in 37 CFR 1.63(b).

I.   IN GENERAL

With certain exceptions, nonprovisional utility and plant applications for patent filed on or after November 29, 2000 are published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code (eighteen-month publication or pre-grant publication (PGPub)). See 35 U.S.C. 122(b). The Office will generally publish:

  • (A) utility and plant applications filed under 35 U.S.C. 111(a) on or after November 29, 2000; and
  • (B) nonprovisional applications which entered the national stage after compliance with 35 U.S.C. 371 from an international application under 35 U.S.C. 363 filed on or after November 29, 2000 (regardless of whether the international application has been published by the International Bureau (IB) under PCT Article 21 in English).

The Office will not publish the following applications under 35 U.S.C. 122(b):

  • (A) Provisional applications filed under 35 U.S.C. 111(b) (for more information see subsection II. EXCEPTIONS below);
  • (B) Design applications filed under 35 U.S.C. 171; and
  • (C) Reissue applications filed under 35 U.S.C. 251 (because reissue applications are not kept confidential under 35 U.S.C. 122(a)).

Applications will be published after the expiration of a period of eighteen months from the earliest of: (1) the U.S. filing date; (2) the international filing date; or (3) the filing date of an earlier application for which a benefit is sought under 35 U.S.C. 119, 120, 121, or 365. Applicants are encouraged to timely submit any desired priority and benefit claims to ensure that their applications will be published on time and to avoid the need to file a petition to accept unintentionally delayed priority or benefit claims under 37 CFR 1.55 or 1.78 and the surcharge set forth in 37 CFR 1.17(t). See MPEP § 211.04 and 214.02. Applications are normally published based on the application as filed and certain amendments. See MPEP § 1121. A proper continued prosecution application (CPA) for utility or plant patent filed on or after November 29, 2000 will be published based upon the application papers deposited on the filing date of the first prior application. (Note: CPA practice has been eliminated as to utility and plant applications effective July 14, 2003. See MPEP § 201.06(d). Since a request for continued examination (RCE) under 37 CFR 1.114 is not the filing of a new application, filing an RCE will not cause an application filed before November 29, 2000 to be published. The Office will not mail a paper copy of the patent application publication to the applicant, but will mail a notice to the applicant indicating that the application has been published. See MPEP § 1127. Patent application publications are available on the USPTO web site (www.uspto.gov).

II.   EXCEPTIONS

An application will not be published if one of the following exceptions as set forth in 37 CFR 1.211 applies:

  • (A) The application is recognized by the Office as no longer pending; for information on express abandonment to avoid publication see 37 CFR 1.138(c) and MPEP § 1125;
  • (B) The application is national security classified (see 37 CFR 5.2(c), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
  • (C) The application has issued as a patent in sufficient time to be removed from the publication process; or
  • (D) The application was filed with a nonpublication request in compliance with 37 CFR 1.213(a). See MPEP § 1122-1124.

The Office will not publish applications that are recognized as no longer pending. See 37 CFR 1.211(a)(1). An application is not "recognized by the Office as no longer pending" when the period for reply (either the shortened statutory period for reply or the maximum extendable period for reply) to an Office action has expired, but the Office has not yet entered the change of status (to abandoned) of the application in the Office’s Patent Application Locating and Monitoring (PALM) system and mailed a notice of abandonment. An application will remain in the publication process until the PALM system indicates that the application is abandoned. Once the PALM system indicates that an application is abandoned, the Office will attempt to remove the application from the publication process and avoid dissemination of the application information.

Unless an applicant has received a notice of abandonment at least 4 weeks prior to the projected publication date, an applicant who wants to abandon the application to avoid publication must file a petition under 37 CFR 1.138(c) to expressly abandon the application and avoid publication. See MPEP § 1125. An applicant who seeks to avoid publication by permitting an application to become abandoned (for failure to reply to an Office action) and passively waiting for the Office to recognize that the application has become abandoned bears the risk that the Office will not recognize that the application has become abandoned and change the status of the application in the PALM system in sufficient time to avoid publication.

The Office will not publish applications that have issued as patents in sufficient time to be removed from the publication process. See 37 CFR 1.211(a)(3). If the pre-grant publication process coincides with the patent issue process, the Office will continue with the pre-grant publication process until a patent actually issues. This is because there are many instances in which the Office mails a notice of allowance in an application but the application does not issue as a patent in regular course (e.g., abandonment due to failure to pay the issue fee, or withdrawal from issue). Therefore, the Office will not discontinue the pre-grant publication process until a patent has actually issued. Since the Office cannot discontinue the pre-grant publication process during the last two to four weeks of the publication process, this will result in a few applications being issued as patents and subsequently being published as patent application publications.

The Office may refuse to publish an application, or to include a portion of an application in the publication, if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material. See 37 CFR 1.211(d). The Office may require a substitute specification to delete the portion of the application that would violate Federal or state law, or that contains offensive or disparaging material.

Converting a nonprovisional application to a provisional application will not avoid the publication of the nonprovisional application unless the request to convert is recognized in sufficient time to permit the appropriate officials to remove the nonprovisional application from the publication process. The Office cannot ensure that it can remove an application from the publication process or avoid publication of application information any time after the publication process for the application has been initiated. Technical preparations for publication of an application generally begin four months prior to the projected publication date. The projected publication date is indicated on the filing receipt for the patent application.

III.   APPLICATION MUST BE COMPLETE

In accordance with 37 CFR 1.211(c), publication will not occur or will be delayed in certain circumstances. The Office will not publish an application until the application includes:

  • (A) the basic filing fee; and
  • (B) an English translation if the application is in a language other than English.

The Office may delay publication until the application includes:

(A) any application size fee required by the Office under 37 CFR 1.16(s) or 37 CFR 1.492(j);

  • (B) a specification in compliance with 37 CFR 1.52;
  • (C) an abstract in compliance with 37 CFR 1.72(b);
  • (D) drawings (if any) in compliance with 37 CFR 1.84;
  • (E) a sequence listing in compliance with 37 CFR 1.821 through 1.825 (if applicable); and.
  • (F) an executed oath or declaration under 37 CFR 1.63 and/or an application data sheet for application filed on or after September 16, 2012.

The Office may also delay publication until any petition under 37 CFR 1.47 is granted for applications filed prior to September 16, 2012.

If an application does not contain the content specified in 37 CFR 1.211(c) and papers or drawings of sufficient quality to create a patent application publication by eighteen months from the earliest filing date for which benefit is claimed, the Office will publish the application as soon as practical after these deficiencies are corrected. For example, publication of the patent application publication may be delayed if the application papers submitted on the filing date of the application do not include the content needed (e.g., an abstract, or an executed oath or declaration, and/or an application data sheet for applications filed on or after September 16, 2012) or the specification (including claims) or drawings are not of sufficient quality to be used to create a patent application publication. In such a situation, the Office will issue a preexamination notice requiring a substitute specification or replacement drawings. The applicant’s reply (e.g., substitute specification or replacement drawings) to the notice will be used for creating the patent application publication. If the application on filing includes papers that are of sufficient quality to create the publication, the Office will publish the application using the originally filed application papers.

Applicants who attempt to delay publication by intentionally delaying the submission of the application content necessary for publication may encounter a reduction in any patent term adjustment under 35 U.S.C. 154(b). See 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b).

IV.   PROJECTED PUBLICATION DATE

Once the application is complete, the Office will provide applicants the projected publication date of the application on a filing receipt. The projected publication date normally will be the later of: (1) eighteen months from the earliest filing date claimed; or (2) fourteen weeks from the mailing date of the filing receipt. The publication process takes about fourteen weeks. Publication occurs on Thursday of each week.

Applicants should carefully and promptly review their filing receipts. Applicants should promptly file a request for corrected filing receipt if the information on the filing receipt needs to be corrected. In addition, applicants should contact the Office of Data Management – Patent Publication Branch (see MPEP § 1730) if the projected publication date is incorrect or if a projected publication date has been assigned to an application that should not be published. Applicants should also promptly check any priority or benefit claims provided on the filing receipt and timely file or correct any priority or benefit claims if the filing receipt does not include the desired claims or includes incorrect claims. If the information is incorrect, Applicants should promptly file a request for corrected filing receipt to assist the Office in quickly processing the change prior to export of the application to the publisher. This will avoid the need to file a petition under 37 CFR 1.55 or 1.78 to accept unintentionally delayed claims and the surcharge under 37 CFR 1.17(t). See MPEP § 211.04 and 214.02. Furthermore, if the corrections are not recognized by the Office of Data Management – Patent Publication Branch before the technical preparation for publication has begun, the Office cannot change the projected publication date and include the corrections in the publication.

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